Ex Parte Malcolm

Patent Trial and Appeal Board

Apr 10, 2015

12040047 (P.T.A.B. Apr. 10, 2015)

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.
12/040,047 02/29/2008 David H. MALCOLM 05220.1212 (L1163) 8670
14400 7590 04/10/2015
Patent Docket Administrator
LOWENSTEIN SANDLER LLP
65 Livingston Avenue
Roseland, NJ 07068
EXAMINER
KABIR, MOHAMMAD H
ART UNIT PAPER NUMBER
2198
MAIL DATE DELIVERY MODE
04/10/2015 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID H. MALCOLM
____________

Appeal 2012-012500
Application 12/040,047
Technology Center 2100
____________

Before ROBERT E. NAPPI, BRUCE R. WINSOR, and
NABEEL U. KHAN, Administrative Patent Judges.

KHAN, Administrative Patent Judge.

DECISION ON APPEAL

Appellant
1
appeals under 35 U.S.C. § 134(a) from the final rejection
of claims 1, 3–10, 12–18, 20–23, and 25–27. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.

1
According to Appellant, the real party in interest is Red Hat Inc. Br. 3.

Appeal 2012-012500
Application 12/040,047

2
THE INVENTION
The invention relates to generating a progress indicator in a
programming loop. Abstract. Independent claim 1, which is illustrative, is
reproduced below.
1. A method, comprising:
executing a repetitive software process by a processing
device, wherein an encoded progress operator is configured in
an execution path of the repetitive software process, the
repetitive software process comprising a set of loop code that
repeats at least one of a computation or a logical operation until
a criterion is fully satisfied;
capturing progress information from the repetitive
software process by the processing device using the encoded
progress operator during execution of the repetitive software
process, the progress information indicating a number of
repetitions of at least one of the computation or the logical
operation that have been completed;
communicating the progress information to a notification
manager; and generating a progress notification representing a
state of progress of the repetitive software process.

ANALYSIS
The Examiner has rejected claims 1, 3–10, 12–18, 20–23, and 25–27
under 35 U.S.C. 102(e) as anticipated by Pederson et al. (US 2009/0164933
A1, pub. June 25, 2009) (“Pederson”). Appellant contends the Examiner has
not established that Pederson discloses “capturing progress information that
indicates a number of repetitions of at least one of a computation or logical
Appeal 2012-012500
Application 12/040,047

3
operation that have been completed
2
.” Br. 11. We agree with Appellant and
are persuaded of Examiner error.
Claim 1 requires “capturing progress information from the repetitive
software process . . . indicat[ing] a number of repetitions of at least one of
the computation or the logical operation that have been completed.” For this
disputed limitation the Examiner applies an obviousness analysis and states
“[i]t is also in ordinary skill of art can set a counter to capture how many
times the repetition take place (Figure 8B, elements 840-846, paragraphs
0107-0109).” Ans. 22-23; see also Final Act. 6.
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). “The identical invention
must be shown in as complete detail as is contained in the . . . claim.”
Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989).
The Examiner’s reliance on what is within the ability of those of ordinary
skill is insufficient to support an anticipation rejection. We agree with
Appellant that the Examiner has not specifically identified the portions of
Pederson that disclose the disputed limitation expressly. Br. 11; see also
Ans. 22–23; Final Act. 6. And the reliance on ordinary skill, without more,
is insufficient to establish that the limitation is disclosed inherently. See Ex
parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990) (“[T]he examiner must
provide a basis in fact and/or technical reasoning to reasonably support the

2
Appellant presents additional arguments in the Appeal Brief. However,
because the identified issue is dispositive of the appeal, we do not address
these additional arguments.
Appeal 2012-012500
Application 12/040,047

4
determination that the allegedly inherent characteristic necessarily flows
from the teachings of the applied prior art.”) (emphasis in original).
On this record we are constrained to conclude the Examiner has not
established that Pederson discloses “capturing progress information . . .
indicating a number of repetitions of at least one of the computation or the
logical operation that have been completed.” Accordingly, we do not sustain
the rejection as anticipated by Pederson of independent claim 1 and of
independent claims 10, 18, and 23 which contain substantially the same
limitation. We also do not sustain the rejection of claims 3–9, 12–17, 20–22,
and 25–27 which depend from these independent claims.

DECISION
The Examiner’s rejection of claims 1, 3–10, 12–18, 20–23, and 25–27
is reversed.

REVERSED
dw