Ex Parte Escribano

Patent Trial and Appeal Board

Jan 30, 2017

12948406 (P.T.A.B. Jan. 30, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/948,406 11/17/2010 Carlos Martinez Escribano 13913-0558001/2010P00326 3790
32864 7590 02/01/2017
FISH & RICHARDSON, P.C. (SAP)
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
MITCHELL, JASON D
ART UNIT PAPER NUMBER
2199
NOTIFICATION DATE DELIVERY MODE
02/01/2017 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CARLOS MARTINEZ ESCRIBANO
Appeal 2016-006426
Application 12/948,406
Technology Center 2100
Before STEPHEN C. SIU, JAMES R. HUGHES, and
SCOTT B. HOWARD, Administrative Patent Judges.
SIU, Administrative Patent Judge
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1, 4—9, 11—15, 17—21, and 25—27. We
have jurisdiction under 35 U.S.C. § 6(b).
The disclosed invention relates generally to obtaining notes for
software objects. Spec 1. Independent claim 1 reads as follows:
1. A computer-implemented method, the method
comprising:
Appeal 2016-006426
Application 12/948,406
executing, in a customer computer system, a process that
utilizes a first object and a second object during execution of the
process;
determining, by the customer computer system, that a
problem occurred during execution of the process;
performing, by the customer computer system and after
determining that the problem occurred, a trace of the process
while reproducing the problem, the trace identifying the first
object and the second object as being involved in reproducing the
problem;
conducting, by the customer computer system and after
performing the trace, a first search that uses an identifier for the
first object to perform the search and that is of a plurality of notes
configured for implementation in the customer computer system,
and in response:
(i) determining, using the customer computer system, that a
first note of the plurality of notes applies to the identified first
object based on results of the first search conducted using the
identifier for the first object, wherein the first note is an update
that is for the first object and that has not already been installed on
the customer computer system;
(ii) responsive to determining that the first note of the
plurality of notes applies to the identified first object, displaying a
graphic representation of the first note;
(iii) receiving a user selection of the graphic representation
of the first note;
(iv) responsive to receiving the user selection,
implementing the first note to update the first object;
conducting, by the computing system and after performing
the trace, a second search that uses an identifier for the second
object to perform the search and that is of the plurality of notes
configured for implementation in the customer computer system,
and in response:
2
Appeal 2016-006426
Application 12/948,406
(i) determining, using the customer computer system, that a
second note of the plurality of notes applies to the identified
second object based on results of the second search conducted
using the identifier for the second object, wherein the second note
is an update for the second object;
(ii) determining that the second note has already been
installed on the customer computer system;
(iii) responsive to determining that the second note has
already been installed on the customer computer system,
bypassing presentation of a graphic representation of the second
note;
executing, in the customer computer system and after
having implemented the first note and determining that the second
note has already been installed, the process;
determining that the problem did not occur during
execution of the process after implementation of the first note and
the determination that the second note has already been installed.
The Examiner rejects claims 1,9, and 15 under 35 U.S.C. § 103(a) as
unpatentable over Yuan et al., “Automated Known Problem Diagnosis with
Event Traces,” EuroSys 2006 (“Yuan”), Smith et al. (US Publication
2007/0277167 Al, published Nov. 29, 2007), Button et al. (US Publication
2012/0137279 Al, published May 31, 2012), and Official Notice; claims 4—
6, 11, 12, 17, 18, 21, and 23 under 35 U.S.C. § 103(a) as unpatentable over
Yuan, Smith, Button, Official Notice, and Smith et al., HP (US 6,477,703
Bl, issued Nov. 5, 2002); claims 7, 8, 13, 14, 19, and 20 under 35 U.S.C.
§ 103(a) as unpatentable over Yuan, Smith, Button, Official Notice, and
Subramanian et al. (US Publication 2006/0130040 Al, published June 15,
3
Appeal 2016-006426
Application 12/948,406
2006); claim 22 under 35 U.S.C. § 103(a) as unpatentable over Yuan, Smith,
Button, Official Notice, Smith-HP, and Hines (US Publication
2002/0112200 Al, published Aug. 15, 2002).
ISSUE
Did the Examiner err in rejecting claims 1, 4—9, 11—15, 17—21, and
25-27?
ANALYSIS
Claim 1 recites conducting a first and second “search” “after
performing the trace.” The Examiner finds Yuan discloses “performing a
trace,” Smith discloses “a search for first and second objects,” and it would
have been obvious to combine the teachings of Yuan and Smith “to find any
updates to the objects identified . . .” Ans. 24 (citing Yuan 377, 378, 382;
Smith || 38, 43). Appellant argues Smith discloses a search that “is applied
when a particular software program is executed,” but fails to disclose or
suggest “conducting . . . a . . . search” “after performing the trace” and is
“silent as to performing a trace.” App. Br. 14. We are not persuaded by
Appellant’s argument. In view of the Examiner’s reliance on the
combination of Yuan and Smith, as opposed to Smith in isolation, even
assuming Appellant to be correct that Smith is “silent as to performing a
trace” and does not disclose conducting a search after performing a trace,
Appellant does not explain error in the Examiner’s finding that Yuan
4
Appeal 2016-006426
Application 12/948,406
discloses a trace or that the combination of Yuan and Smith discloses
conducting a search after performing a trace. One cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references. In re Keller, 642 F.2d 413 (CCPA
1981).
Appellant also argues “Yuan does not disclose or even imply that a
search is conducted after performing the trace.” Reply Br. 2. As noted
above, the Examiner’s rejection is based on the combination of Yuan and
Smith and that Smith discloses the claimed “search.” We do not find
Appellant’s arguments that Yuan in isolation (or Smith in isolation) fails to
disclose an alleged claim feature persuasive given the Examiner’s reliance
on the combination of both Yuan and Smith.
Claim 1 recites a first search that uses an identifier for the first object
to perform the search and that is of a plurality of notes configured for
implementation in the customer computer system. The Examiner finds
Smith discloses this feature. Final Act. 8 (citing Smith || 38, 43). As the
Examiner points out, Smith discloses searching for updates—a “list of
updates [e.g., “notes”] that are available for the software program,” which
includes an update “that has not already been downloaded [or] installed” for
a “particular software program” (i.e., a “note,” as claimed, being “an update”
for an object “that has not already been installed on the . . . computer
system,” as recited in claim 1). Smith 143.
5
Appeal 2016-006426
Application 12/948,406
Appellant argues Smith discloses “us[ing] changes in code, such as a
hexadecimal representation to produce a list of updates, which is different
than a first search that uses an identifier for the first object to perform the
search and that is of a plurality of notes configured for implementation in the
customer computer system.” App. Br. 14—15; see also Reply Br. 3. We are
not persuaded by Appellant’s argument. As previously discussed, claim 1
recites “a first search that uses an identifier for the first object to perform the
search and that is of a plurality of notes configured for implementation in the
customer computer system.” Appellant does not demonstrate sufficiently
that claim 1 also recites that the “plurality of notes” are not produced by
changing code or using a hexadecimal representation. Indeed, claim 1 does
not appear to recite any relevant specific features of producing the “plurality
of notes” at all.
Claim 1 recites determining a problem did not occur during execution
of a process after implementation of a first update (i.e., “first note”) and
determination that a second update (i.e., a “second note”) has already been
installed. The Examiner finds that “[i]t is officially noted that testing an
applied update ... is well known in the art.” Final Act. 11. Appellant
argues that “[t]he burdens regarding Official Notice have not been met by
the final Office action” because the Official Notice is “unsupported by
documentary evidence.” App. Br. 15—16. In response, the Examiner
provides documentary evidence in support of the Official Notice — i.e., the
Examiner cites US Patent Publication 2004/0060044 (“Das”) as disclosing
6
Appeal 2016-006426
Application 12/948,406
“testing an update applied to a customer computer system.” Ans. 28 (citing
Das 45). Hence, Appellant’s argument pertaining to this issue is moot.
Appellant does not provide additional arguments with respect to the
other claims subject to appeal and does not provide arguments with respect
to the other cited prior art references. App. Br. 16.
SUMMARY
We affirm the Examiner’s rejection of claims 1,9, and 15 under 35
U.S.C. § 103(a) as unpatentable over Yuan, Smith, Button, and Official
Notice; claims 4—6, 11, 12, 17, 18, 21, and 23 under 35 U.S.C. § 103(a) as
unpatentable over Yuan, Smith, Button, Official Notice, and Smith-HP;
claims 7, 8, 13, 14, 19, and 20 under 35 U.S.C. § 103(a) as unpatentable over
Yuan, Smith, Button, Official Notice, and Subramanian; and claim 22 under
35 U.S.C. § 103(a) as unpatentable over Yuan, Smith, Button, Official
Notice, Smith-HP, and Hines.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
7