Ex Parte FarnsworthDownload PDFPatent Trial and Appeal BoardNov 15, 201713599351 (P.T.A.B. Nov. 15, 2017) Copy Citation 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. 13/599,351 08/30/2012 Jared M. Farnsworth 22562-674/2012-022 7367 96411 7590 11/15/2017 Dinsmore & Shohl LLP 255 East Fifth Street, Suite 1900 Cincinnati, OH 45202 EXAMINER KO, CHAE M ART UNIT PAPER NUMBER 2114 MAIL DATE DELIVERY MODE 11/15/2017 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 JARED M. FARNSWORTH1 Appeal 2016-005023 Application 13/599,351 Technology Center 2100 Before ERIC S. FRAHM, LARRY J. HUME, and JAMES W. DEJMEK, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Introduction Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1—18 and 20, which constitute all the claims pending in this application. Claim 19 has been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 According to Appellant, the real party in interest in this appeal is the assignee, Toyota Motor Engineering & Manufacturing North America, Inc. Appeal 2010-003230023 Application 11/045,514 Exemplary Claim Appellant’s disclosed invention pertains to software validation (i.e., error checking) for integrated software in vehicles before the vehicles are sold to consumers (Spec. 12). Claims 1, 8, and 15 are independent and all pertain to a method (see, e.g., claim 1); a system with a test computing device, memory, and logic to perform a method (see, e.g., claim 8); and a non-transitory computer-readable medium storing logic executed by a test computing device to perform a method (see, e.g., claim 15), for state based test case generation for software validation (Spec. Tflf 1—3; Abstr.; Title). An understanding of the invention can be derived from a reading of exemplary claim 1, which is reproduced below with emphases and bracketed lettering added to disputed portions of the claim: 1. A method for state based test case generation for software validation comprising: determining, by a test computing device, a first input and a first input type for a program block of software for creating a test case, wherein the first input type includes a state based input; [A] determining, by the test computing device, permutations of values for the first input, based on the first input type', implementing, by the test computing device, the test case with the state based input, wherein implementing the test case comprises applying the permutations of values for the first input to the program block; [B] determining, by the test computing device, whether the test case meets a predetermined level of modified condition/decision coverage (MC/DC); and providing, by the test computing device, an indication of whether the test case meets the predetermined level of MC/DC. 2 Appeal 2010-003230023 Application 11/045,514 Remaining independent claims 8 and 15 recite similar limitations as recited in claim 1. The Examiner’s Rejections (1) The Examiner rejected claims 1—10 and 13 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Cleaveland (US 2005/0160321 Al; published July 21, 2005), Lucas Albertins de Lima, et al., A Permutation Technique for Test Case Prioritization in a Black-box Environment, 2nd Brazilian Workshop on Systematic and Automated Software Testing, Sections 1—5, pp. 1—10 (2008) (hereinafter, “Lima”), and Matt Staats, et al., On the Danger of Coverage Directed Test Case Generation, Proceedings of the 15th International Conference on Lundamental Approaches to Software Engineering, Sections 1—8, pp. 1—15 (2012) (hereinafter, “Staats”). Pinal Act. 2—13; Ans. 2—13. (2) The Examiner rejected claims 11 and 12 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Cleaveland, Lima, Staats, and Osborne, II (US 6,934,934 Bl; issued Aug. 23, 2005) (hereinafter, “Osborne”). Pinal Act. 13—15; Ans. 13—15. (3) The Examiner rejected claims 14—18 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Cleaveland, Lima, Staats, and Chon (US 2006/0212540 Al; published Sept. 21, 2006). Pinal Act. 15—17; Ans. 15-17. 3 Appeal 2010-003230023 Application 11/045,514 (4) The Examiner rejected claim 202 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Cleaveland, Lima, Staats, Chon, and Osborne. Final Act. 17—18; Ans. 17—18. Principal Issue on Appeal Based on Appellant’s arguments in the briefs (App. Br. 5—12; Reply Br. 2—5) in response to the Examiner’s rejections (Final Act. 2—18), the following principal issue is presented on appeal:3 4 Did the Examiner err in rejecting (i) claims 1—10 and 13 over the combination of Cleaveland, Lima, and Staats; and (ii) claims 11, 12, 14—18, 2 We note claim 20 improperly depends from canceled claim 19 (see App. Br. 16). Because claim 20 recites “the user interface” which occurs for the first time in claim 19 which depends from claim 18 (see claim 18 reciting “a user interface for receiving the first input”), we consider claim 20 to depend from claim 18. We take this incorrect claim dependency to be a harmless error which will not alter the outcome of our decision, and we will decide claim 20 on the same basis as claims 15 and 18 from which claim 20 ultimately depends. 3 Appellant argues claim 1—10 and 13 as a group, and argues only the merits of claim 1 (App. Br. 5—10), relying on these arguments for the patentability of the remaining claims (see App. Br. 10). Independent claims 1 and 8 each recite similar limitations pertaining to state based test case generation for software validation including determining steps [A] and [B] (see, e.g., claim 1). Accordingly, we select claim 1 as representative of the group of claims 1—10 and 13 rejected over Cleaveland, Lima, and Staats. 37 C.F.R. § 41.37(c)(l)(iv). Because (i) Appellant relies on the arguments presented as to claims 1 and/or 8 for the patentability of claims 11, 12, and 14 (see App. Br. 10-11); and (ii) the rejection of claims 11, 12, and 14 (which all depend from claim 8) relies upon the same base combination used for claim 1, we decide the outcome of claims 11, 12, and 14 on the same basis as representative independent claim 1. Appellant presents separate arguments for independent claim 15, and relies on those arguments for the patentability of claims 16—18 and 20 which depend from claim 15 (see App. Br. 10-11). We consider Appellant’s 4 Appeal 2010-003230023 Application 11/045,514 and 20 over the same base combination modified by various other references, because the base combination fails to teach or suggest the disputed limitations of a method for state based test case generation for software validation including determining steps [A] and [B], as recited in representative independent claims 1 and 15? ANALYSIS We have reviewed the Examiner’s rejections (Final Act. 2—18; Ans. 2—18) in light of Appellant’s contentions in the Appeal Brief (App. Br. 5—12) and the Reply Brief (Reply Br. 2—5) that the Examiner has erred, as well as the Examiner’s response to Appellant’s arguments in the Appeal Brief (Ans. 18—21). We disagree with Appellant’s arguments as to independent claims 1, 8, and 15. With regard to representative independent claims 1 and 15, we adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (claim 1: Final Act. 2—5; Ans. 2-4) (claim 15: Final Act. 8—12, 16—18; Ans. 8—11, 16—17), and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to the Appellant’s Appeal Brief (claim 1: Ans. 18—20) (claim 15: Ans. 21). We reference to independent claim 14 (see App. Br. 11) to be harmless error, and take Appellant’s arguments as to claims 16—18 and 20 as relying on the arguments presented for independent claim 15 from which claims 16—18 and 20 depend. Accordingly, we select claim 15 as representative of the group of claims 15—18 and 20 rejected over the base combination of Cleaveland, Lima, Staats, and Chon (because the rejection of claim 20 (which ultimately depends from claims 15 and 18) relies upon the same base combination used for claim 15, we decide the outcome of claim 20 on the same basis as representative independent claim 15). 37 C.F.R. § 41.37(c)(l)(iv). 5 Appeal 2010-003230023 Application 11/045,514 highlight and amplify certain teachings and suggestions of the references as follows. Representative Claim 1 Cleaveland (Abstr., 13) pertains to generating test cases for software in automobiles or airplanes. Lima (Abstr., p. 1, Section 1,12) pertains to state based test case generation using permutations for cell phones. And, Staats (Abstr., p. 2, Section 1,13) relates to automated test generation tools and methods using modified condition/decision coverage (MC/DC) for airplanes. Thus, Cleaveland, Lima, and Staats, as well as Appellant’s invention recited in claim 1, all pertain to methods for test case generation for software validation. Appellant’s argument (App. Br. 6—8) that Staats teaches away from Lima (and vice versa) is unpersuasive. “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Appellant’s argument (App. Br. 6—8) is premised on Staats’ description that reducing the number of test suites is advantageous, whereas Lima describes a need to reduce test execution time by reducing the number of tests performed and avoiding generating permutations. However, we agree with the Examiner (Ans. 18—19) that although “Lima tries to reduce the number of tests that are performed, Lima does the permutation for the optimization in generating various test cases for the suite and not just to eliminate the permutation (see section 2.1)” (Ans. 18). 6 Appeal 2010-003230023 Application 11/045,514 Appellant also argues (App. Br. 6) that Lima does not generate a full test sequence. However, the language in limitation [A] recited in claim 1 merely recites determining and applying “permutations of values,” and does not require that performing all of the permutations as Appellant argues. In any event, Lima discloses “P” which is all sets and all permutations (Lima, p. 2, Section 2, Definition 1), and then discloses “[w]e have to produce all permutations of test cases” (p. 2, Section 2,14) (emphasis added). Appellant’s Reply Brief does not convince us otherwise. Therefore, neither Staats nor Lima teaches away from Appellant’s invention recited in claim 1. Appellant’s arguments (App. Br. 6; Reply Br. 4) that Staats fails to disclose or suggest limitation [B], including determining a MC/DC threshold level, are unpersuasive. Instead, we agree with the Examiner (Ans. 20) that Staats teaches or suggests measuring fault finding effectiveness of generated test suites satisfying certain coverage criteria that is equivalent to determining a MC/DC threshold level in Sections 1 and 2. Representative Claim 15 Appellant makes the same arguments for claim 15 as made for claims 1 and 8, with the addition of contending that “Chon does not suggest MC/DC or determining whether a predetermined level of MC/DC is reached” and Chon fails to overcome the deficiencies of Lima and Staats (App. Br. 10). Appellant’s arguments presented as to Chon (see App. Br. 10; Reply Br. 4—5) are not persuasive inasmuch as the Examiner relies on a properly made combination of Cleaveland, Lima, Staats, Chon, and Osborne to support the conclusion of obviousness of the subject matter of independent claim 15. We note that each reference cited by the Examiner 7 Appeal 2010-003230023 Application 11/045,514 must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (finding one cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references). Appellant has not rebutted or otherwise shown the Examiner’s explanation of the combination of the collective teachings and suggestions of the applied references (see Final Act. 8—12, 16—18; Ans. 8—11, 16—17) made in response to the Appellant’s arguments in the Appeal Brief (regarding Chon individually) to be in error. Chon is relied on by the Examiner as teaching, inter alia, a vehicle computer that communicates data to a test computer (Ans. 15—16), and not determining a level of MC/DC as Appellant contends. Furthermore, we agree with the Examiner (Final Act. 11; Ans. 11, 20—21) that Staats (p. 2, Section 1,13; p. 3, Section 2, || 1—3; pp. 6—7, Section 3.4, || 2—3) teaches determining whether a predetermined level of MC/DC is reached (see also, e.g., claim 1, limitation [B]). Appellant’s Reply Brief does not convince us otherwise. Summary In view of the foregoing, we sustain the Examiner’s obviousness rejection of representative independent claim 1, as well as claims 2—10 and 13 grouped therewith. For similar reasons, and because (i) claims 11, 12, 14—18, and 20 each ultimately depend from claims 8 and/or 15, and therefore, contain all of the salient limitations; and (ii) Appellant argues claims 11, 12, 14—18, and 20 for the same reasons as claims 8 and 15 (see App. Br. 10-11), we also sustain the Examiner’s obviousness rejections of dependent claims 11, 12, 14—18, and 20. 8 Appeal 2010-003230023 Application 11/045,514 CONCLUSION The Examiner did not err in rejecting (i) claims 1—10 and 13 over the combination of Cleaveland, Lima, and Staats; and (ii) claims 11, 12, 14—18, and 20 over the same base combination modified by various other references, because the base combination teaches or suggests the disputed limitations of a method for state based test case generation for software validation including determining steps [A] and [B], as recited in representative independent claims 1 and 15. DECISION We affirm the Examiner’s rejections of claims 1—18 and 20 under 35 U.S.C. § 103(a). 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). See 37 C.F.R. § 41.50(f). AFFIRMED 9 Copy with citationCopy as parenthetical citation