Ex Parte Rabin

Patent Trial and Appeal BoardApr 12, 2016

12533845 (P.T.A.B. Apr. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/533,845 07/31/2009 27562 7590 04/14/2016 NIXON & V ANDERHYE, P,C 901 NORTH GLEBE ROAD, 11 TH FLOOR ARLINGTON, VA 22203 FIRST NAMED INVENTOR Steve RABIN 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. LB-723-2582 8364 EXAMINER MAMO, ELIAS ART UNIT PAPER NUMBER 2184 NOTIFICATION DATE DELIVERY MODE 04/14/2016 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): PTOMAIL@nixonvan.com pair_nixon@firsttofile.com PTOL-90A (Rev. 04/07) UNITEn STATES PATENT ANn TRA.nEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEVE RABIN Appeal2014-004701 Application 12/533,845 Technology Center 2100 Before DANIEL N. FISHMAN, KEVIN C. TROCK, and ADAM J. PYONIN, Administrative Patent Judges. PYONIN, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. Â§ 134(a) from a rejection of claims 1--4, and 13-16, which are all pending claims. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm-in-part. STATEMENT OF THE CASE Introduction Appellant's disclosure is directed to a method and apparatus for efficient statistical profiling of video game and simulation software. Title. Appeal2014-004701 Application 12/533,845 Claims 1 and 13 are independent. Claim 1 is reproduced below for reference: 1. A computing system for monitoring and testing executing software of the type that generates moving image frames on a display device at a predetermined refresh rate, the computing system comprising; 1 a computer processor that executes code to provide a display on said display device; a statistical sampler section, which performs statistical sampling of the code being executed to provide profiling data, wherein at least the first sampling point in each frame has a random temporal offset relative to the refresh rate; and an analyzer section that receives the profiling data from the statistical sampler section and provides information about the dynamic operation of the executing code. References and Rejections Claims 1--4 stand rejected under 35 U.S.C. Â§ 112 (pre-AIA), second paragraph, as being indefinite. Final Act. 2. Claims 1--4 and 13-16 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Chilimbi (US 2006/0242636 Al; Oct. 26, 2006) and Pettis (US 5,212,794; May 18, 1993). Final Act. 4. ANALYSIS We have reviewed the Examiner's rejections in light of Appellant's arguments that the Examiner has erred. We agree with Appellant's conclusion that the Examiner erred in rejecting independent claims 1 and 13 as unpatentable in view of Chilimbi and Pettis; however, we disagree with 1 We note claims 1 and 13 both include a semi-colon after the term "comprising." For purposes of this Decision, we treat the semi-colon as a colon. 2 Appeal2014-004701 Application 12/533,845 Appellant's conclusion with respect to the Examiner's indefiniteness rejection of claims 1--4. A. Indefiniteness Rejection Appellant argues the Examiner's indefiniteness rejection is in error, because "the term 'statistical sampler section' is an art-recognized term," and "the meaning of the term 'analyzer section' is clear to one of ordinary skill in the art." App. Br. 9 (referring to patent US 6,718,286). Appellant further contends "the written description of the present specification does disclose the corresponding structure of the above terms. For example, paragraphs [0023], [0029], [0033]-[0036] of the specification disclose how the statistical sampler section and the analyzer section work." App. Br. 10 (emphasis added). The Examiner finds "statistical sampler section" and "analyzer section" recited in claim 1 invoke 35 U.S.C. 112, sixth paragraph. See Final Act. 2-3. The Examiner further finds these terms are not recognized in the art to have, nor does the Specification provide, sufficient structure to render the terms definite. See Ans. 2-3. We are not persuaded the Examiner's rejection is in error. See Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) ("The standard [for identifying means-plus-function limitations] is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure."). Appellant's arguments are directed to the function of the "section" recitations (see, e.g., Reply Br. 3--4); however, regardless of whether the function was known in the prior art, Appellant does not persuasively show 3 Appeal2014-004701 Application 12/533,845 that a person of ordinary skill in the art would be able to recognize the terms as anything other than a black box for performing these functions. See Spec. i-fi-13, 23. Rather, we find the recited statistical sampler section and the analyzer section serve as nonce words that invoke 35 U.S.C. 112, sixth paragraph. Further, Appellant fails to adequately describe sufficient structure (such as an algorithm recited in the Specification) for performing the functions recited in the means elements contained in claim 1, so as to render the claim definite. See Ex parte Rodriguez, 92 USPQ2d 1395 (BPAI 2009) (precedential) (discussing functional claiming and claim definiteness); see also Aristocrat Technologies Australia Pty Ltd. v. International Game Technology, 521F.3d1328, 1333 (Fed. Cir. 2008). Accordingly, we do not find the Examiner erred in rejecting, as indefinite claim 1 and claims 2--4 which depend therefrom. B. Obviousness Rejection The Examiner determines independent claim 1 is obvious in view of Chilimbi and Pettis because Chilimbi teaches the required first sampling point in each frame has a random temporal offset relative to the refresh rate: Chilimbi teaches a sampling technique called bursty tracing which enables periodic sampling intervals where the sampling sizes and rate of samples can be tuned . . . . [and a] statistical analysis method comprised of a base timing (i.e.-first sampling point) and adding a delta (i.e.-an offset) which is respective timing sample from its base time (i.e.-the first sampling point). Ans. 6 (citing Chilimbi i-fi-f l 0, 26, Fig. 3). Appellant argues the Examiner erred, because Chilimbi does not teach "that the offset value of the first sampling point relative to the refresh rate 4 Appeal2014-004701 Application 12/533,845 changes in a random manner. The distance n between sampling points may change ... but Chilimbi is silent as to where the first sampling point is relative to the beginning of the frame." Reply Br. 5; see also App. Br. 12. Appellant further contends "the histogram of time deltas shown in Fig. 3 [of Chilimbi] has nothing to do with showing a first sampling point and where it is located along the frame time interval .... Instead, the x-origin in Fig. 3 is the shortest time sample of a path, not the first sampling point." Id. at 6; see also App. Br. 12-13. We are persuaded by Appellant's arguments. Chilimbi teaches calculating the variation, or delta, of times of different execution paths (see Chilimbi i-f 10) and that the "rate of sampling and size of samples can be tuned" (see Chilimbi i-f 26); however, the reference is silent regarding the sample beginning at a "random temporal offset," as claimed. Further, the Examiner has not provided any reason to modify Chilimbi with such an offset, and does not rely on Pettis for this limitation. See Ans. 6. Thus, we agree with Appellant that the cited references fail to teach or suggest a first sampling point having a random temporal offset relative to the refresh rate, as recited by independent claim 1. Independent claim 13 recites commensurate limitations, which we find similarly not taught or suggested by the combination of Chilimbi and Pettis. See App. Br. 13. Accordingly, we do not sustain the Examiner's 35 U.S.C. Â§ 103(a) rejection of independent claims 1 and 13, or claims 2--4 and 14--16, which depend therefrom. 2 2 We do not reach Appellant's additional arguments regarding the obviousness rejection of dependent claims 2, 3, 14, and 15 (see App. Br. 14-- 15) because the identified issue is dispositive. 5 Appeal2014-004701 Application 12/533,845 DECISION We affirm the rejection of claims 1--4 under 35 U.S.C. Â§ 112 (pre- AIA), second paragraph, as being indefinite. We reverse the rejection of claims 1--4 and 13-16 under 35 U.S.C. Â§ 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED-IN-PART 6