Ex Parte Bergman et al

Patent Trial and Appeal Board

Feb 19, 2013

10630959 (P.T.A.B. Feb. 19, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte LAWRENCE BERGMAN, VITTORIO CASTELLI,
TESSA LAU, and DANIEL OBLINGER
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Appeal 2010-006751
Application 10/630,959
Technology Center 2100
____________

Before DENISE M. POTHIER, BRUCE R. WINSOR, and
DAVID C. MCKONE, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 20-29. Claims 1-191 and 30-34 have been canceled.
App. Br. 1, 10.2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 Appellants mistakenly include claim 20 in the canceled claims. App.
Br. 10.
2 Throughout this opinion, we refer to the Appeal Brief (App. Br.) filed
January 12, 2009; (2) the Supplemental Examiner’s Answer (Ans.) mailed
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Invention
Appellants’ invention relates to a system and method for dynamically
generating computer executable technical support procedures by tracking the
sequence of actions taken by an expert when performing a procedure. See
Abstract. Claim 20 is reproduced below with the key disputed limitation
emphasized:
20. A system for generating a reusable executable procedure,
comprising:
a client device comprising an application for monitoring and
recording a procedure that is performed using said client device and
generating an execution trace representing an instance of said
procedure;
a procedure trace repository for storing stored execution traces
associated with instances of said procedure; and
a server for processing said execution traces and said stored
execution traces to generate said reusable executable procedure,
wherein said procedure can be automatically performed on the client
by invoking the reusable executable procedure.

The Examiner relies on the following as evidence of unpatentability:
Bala US 2004/0130572 A1 July 8, 2004
(filed Jan. 7, 2003)
Messinger US 7,000,187 B2 Feb. 14, 2006
(field July 1, 1999)

The Rejections
Claims 20-29 are rejected under 35 U.S.C. § 102(e) as anticipated by
Messinger. Ans. 3-7.
Claims 20 and 26 are alternatively rejected under 35 U.S.C. § 102(e)
as anticipated by Bala. Ans. 7-9.

November 25, 2009; and (3) the Reply Brief (Reply Br.) filed January 25,
2010.
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THE ANTICIPATION REJECTION OVER MESSINGER
Regarding illustrative claim 20, Appellants argue Messinger fails to
disclose a server for processing the execution traces and the stored execution
traces to generate said reusable executable procedure. App. Br. 4-5.
Appellants assert that Messinger’s online coach is similar to a wizard and
does not generate a reusable executable procedure. App. Br. 5. Appellants
further contend that Messinger’s procedure is not automatic. App. Br. 5.
Concerning illustrative claim 26, Appellants argue Messinger fails to
teach the recited processing execution traces step. App. Br. 7. Appellants
contend that Messinger only adds new tasks to a list and does not teach
processing multiple tasks to create a reusable executable procedure. App.
Br. 7-8; Reply Br. 8-9.

ISSUES
(1) Under § 102, has the Examiner erred in rejecting claim 20 by
finding that Messinger discloses (a) a server for processing execution traces
and stored execution traces to generate the reusable executable procedure
and (b) the procedure can be automatically performed on the client?
(2) Under § 102, has the Examiner erred in rejecting claim 26 by
finding that Messinger discloses processing execution traces to create a
reusable executable procedure?

ANALYSIS
Claims 20-25
We begin by construing a key limitation of claim 20, “an execution
trace.” Appellants have not defined this phrase (see generally Specification)
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but describe generating a procedure “by tracking and processing sequences
of actions (execution traces) that are taken by experts (or users) when
performing a procedure or when executing an executable procedure” (Spec.
1:11-14). Additionally, Appellants have not demonstrated that the phrase,
“execution trace,” has a particular meaning to an ordinarily skilled artisan.
See App. Br. 4-5. As such, we find the phrase, “execution trace,” when read
in light of the disclosure, can broadly, but reasonably include a sequence of
actions or steps. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004).
Turning to Messinger, the Examiner finds that a task involves a
sequence of steps which collectively correlate to execution traces. See
Ans. 3 (discussing Figure 3A and finding that step 66 shows a sequence
through execution traces). The Examiner also finds that a particular task,
such as Smurf Detection task 42b, has a number of steps (e.g., Steps 1-n)
and is a reusable executable procedure. Ans. 4, 11 (discussing and citing
Figures 9-12 and col. 9, l. 66-col. 11, l. 56). For example, Figure 9 shows on
the left side steps 400 (e.g., steps 1-n shown as 402a-402e) involved in
coaching Smurf Detection task 42b of a Collector Control item 29b. Col. 5,
ll. 39-41; col. 5, l. 65-col. 6, l.3; col. 10, ll. 1-12; Figs. 1, 2, and 9. Figures
10-12 show further steps in implementing the coaching procedure. See col.
10, l. 44- col. 11, l. 30; Figs. 10-12.
Given this discussion, Messinger discloses executing an execution
trace (e.g., a sequence of steps, such as steps 1 and 2 of the Smurf Detection
task) that represents an instance of a procedure3 (e.g., coaching the smurf

3 When discussing Bala, Appellants argue that “atomic steps” represent
different procedures needed to perform a task and are not “analogous to the
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detection process) and also uses other stored execution traces (e.g., stored
instructions to implement steps 3 through n presented to the user), which are
also associated with instances of coaching the Smurf Detection process. See
Ans. 4 (citing col. 9, l. 66 – col. 11, l. 56; Figs. 9-12). Messinger
additionally discloses accessing stored information to generate commands
for and to control the process (see col. 5, ll. 52-61cited at Ans. 3) and
discloses that the previous actions by the user remain for viewing (col. 11, ll.
17-24 cited at Ans. 4), further indicating traces (e.g., sets of steps) of the
coaching process are stored. When viewing this coaching of the Smurf
Detection process in its entirety, Messinger’s server is processing execution
traces and stored execution traces, as broadly as recited, to generate an
executable procedure (e.g., the coaching of the Smurf Detection process).
This procedure is also “reusable” given that the process is implemented each
time a user selects the Smurf Detection task from the task list. Ans. 3 (citing
col. 5, ll. 63-67, col. 7, ll. 5-15; Figs. 2, 5), 4 (citing col. 10, ll. 1-6).
We therefore disagree with Appellants that Messinger’s online coach
fails to include a server for processing execution traces and stored execution
traces to generate a reusable executable procedure as broadly as recited.
Also, whether or not Messinger’s coaching procedure is from the same or
“an entirely different field” than Appellants’ (see App. Br. 5) is not relevant
to an anticipation rejection. See In re Schreiber, 128 F.3d 1473, 1478 (Fed.
Circ. 1997) (stating “the question whether a reference is analogous art is
irrelevant to whether that reference anticipates.”)

claimed ‘execution traces’” that represent an execution instance of a
procedure. Reply Br. 10. Yet, other than a mere assertion, Appellants
provide no evidence to support this position. See In re Huang, 100 F.3d
135, 139-40 (Fed. Cir. 1996).
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Appellants lastly contend that Messinger requires user responses to
actions and thus “[t]he tasks of Messinger are not automatic.” App. Br. 5
(emphasis removed). We are not persuaded. Claim 20 does not exclude
user interaction but rather recites that the procedure “can be automatically
performed on the client by invoking the reusable executable procedure.”
Messinger’s procedure does involve user interaction but the steps of
coaching, which involve displaying and responding to the user’s input, are
automated. See col. 7, ll. 11-12, col. 9, ll. 66–col. 11, l. 56; Figs. 9-12; see
also Ans. 12. We thus find Messinger discloses a procedure that can be
automatically performed on the client as broadly as recited.
For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of independent claim 20 and claims 21-25 not separately
argued with particularity.

Claims 26-29
Claim 26 is broader in scope than claim 20, only requiring processing
execution traces to create a reusable executable procedure. Appellants’
arguments that Messinger fails to disclose processing (1) the recorded new
task with other tasks to create a reusable executable procedure (App. Br. 7)
or (2) the execution trace with stored execution traces to generate a reusable
executable procedure (Reply Br. 9) are thus not commensurate in scope with
claim 26.
We also refer Appellants to the above discussion regarding our claim
construction of the phrase, “an execution trace” and how Messinger
discloses execution traces are obtained and processed to create a reusable
executable procedure as broadly as recited. For the foregoing reasons,
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Appellants have not persuaded us of error in the rejection of independent
claim 26 and claims 27-29 not separately argued with particularity.

THE ANTICIPATION REJECTION OVER BALA
The § 102 rejection based on Bala alternatively rejects claims 20 and
26 using the same statutory basis as the Messinger rejection. Because we
sustain the Examiner’s rejection based on Messinger for the reasons
discussed above and the rejection based on Bala ultimately raises similar
issues but with different prior art, we find it unnecessary to address this
additional rejection of the same claims.4 Accordingly, we affirm the § 102
rejection over Messinger for the reasons discussed above which is a general
affirmance of the decision of the Examiner with regard to the claims under
review, but decline to address the merely cumulative rejection.

CONCLUSION
The Examiner did not err in rejecting claims 20-29 under § 102 based
on Messinger.

DECISION
The Examiner’s decision rejecting claims 20-29 is affirmed.

4 Notably, the Manual of Patent Examining Procedure § 706.02(I) indicates
that the cumulative rejections should be avoided.
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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) (2010).

AFFIRMED

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