Ex Parte Barsness et al

Board of Patent Appeals and Interferences

Apr 14, 2010

10255484 (B.P.A.I. Apr. 14, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ERIC LAWRENCE BARSNESS, RICHARD DEAN
DETTINGER, and JOHN MATTHEW SANTOSUOSSO
____________________

Appeal 2009-007360
Application 10/255,4841
Technology Center 2400
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Decided: April 14, 2010
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Before JAY P. LUCAS, ST. JOHN COURTENAY III, and CAROLYN D.
THOMAS, Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed September 26, 2002. The real party in interest is
International Business Machines Corporation.
Appeal 2009-007360
Application 10/255,484

STATEMENT OF THE CASE
Appellants appeal from a final rejection of claims 1 to 7, 9 to 11, 13 to
15, 33, and 34 under authority of 35 U.S.C. § 134(a). The Board of Patent
Appeals and Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).
Claims 8, 12, 16 to 32, 35, and 36 were cancelled.

We reverse.

Appellants’ invention relates to a method of efficiently testing
software reliability called coverage analysis, which includes accessing a
database (Spec. 1, l. 14; Spec. 4, l. 6; claim 1). In the words of Appellants:
Coverage analysis may be used, for
example, to determine whether all statements in a
software program are executed during execution of
the program, and if not, which statements were
missed during execution of the program.
(Spec. 2, ll. 3-5).

[O]perational statistics associated with database
access by a computer program are utilized for the
purposes of performing coverage analysis of such
a computer program.
(Spec. 4; ll. 3-5).

Such operational statistics are then used in the
context of coverage analysis to investigate the
“database coverage” of the particular testing
algorithms used to exercise the program.
(Spec. 6; ll. 4-6).
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Claim 1 is exemplary, and is reproduced below:
1. A method of performing coverage analysis for a
computer program that accesses a database, the
method comprising:

tracking accesses to records in the database
by the computer program during coverage
analysis, wherein tracking accesses to the
records in the database includes receiving a
database operation from the computer program,
executing the database operation in the
database, and collecting statistics associated
with the database operation during execution of
the database operation; and

calculating at least one database coverage
statistic based upon the tracked accesses to the
records in the database.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kolawa US 6,895,578 B1 May 17, 2005
(filed on Jan. 6, 2000)

REJECTION
The Examiner rejects the claims as follows:

Claims 1 to 7, 9 to 11, 13 to 15, 33, and 34 stand rejected under
35 U.S.C. § 102(e) for being anticipated by Kolawa.

Appellants contend that the claimed subject matter is not anticipated
by Kolawa because Kolawa fails to teach the claim limitation “tracking
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Application 10/255,484

accesses … in the database” (App. Br. 9, top). The Examiner contends that
each of the claims is properly rejected (Ans. 16, middle).
All of the claims stand or fall with claim 1, the sole independent claim
before us on appeal.

ISSUE
The issue is whether Appellants have shown that the Examiner erred
in rejecting the claims under 35 U.S.C. § 102(e). The issue specifically turns
on whether Kolawa teaches “tracking accesses … in the database,” as recited
in exemplary claim 1.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
Disclosure
1. Appellants have invented a method of tracking accesses to records in a
database by a computer program during a type of software testing called
coverage analysis (claim 1; Spec. 1, l. 14).
Kolawa
2. The Kolawa reference teaches a method of accessing computer programs
for purposes of software testing (claim 1; Spec. 1, l. 14).
PRINCIPLES OF LAW
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006).
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In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).

ANALYSIS
From our review of the administrative record, we find that the
Examiner presents his conclusions of unpatentability on pages 3 to 6 of the
Examiner’s Answer. In opposition, Appellants present one argument that is
dispositive.

Argument with respect to the rejection
of claims 1 to 7, 9 to 11, 13 to 15, 33, and 34
under 35 U.S.C. § 102(e)

In their own words, Appellants contend: The claim language clearly
recites tracking accesses to records in a database, and any interpretation that
likens a generic file, class or array to a database reads this database-specific
language out of the claim (App. Br. 9, top).
The Examiner finds that Kolawa teaches a software tool for
facilitating and simplifying testing and debugging computer programs (col.
3, ll. 26-32). The Examiner finds that opening computer files is the same as
“tracking accesses to records in the database,” as recited in claim 1 (Ans. 3,
middle). The Examiner finds that the broadest reasonable interpretation of
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the claim term “database” covers other entities, including classes, arrays,
collections of data or files (Ans. 11, top to middle).
We disagree with the Examiner’s findings. We find that Appellants
have invented a method of tracking accesses to records in a database by a
computer program during a type of software testing called coverage analysis
(FF#1). In contrast, the Kolawa reference teaches a method of accessing
computer programs for purposes of software testing (FF#2).
We begin the analysis of claim 1 by noting that claim 1 recites the
phrase “in the database” four times. Moreover, the word “database
operation” is recited three times in the claim. However, nowhere in the
Kolawa reference is there a teaching of “tracking accesses … in the
database,” as claimed. Kolawa contains no such database. (See the
Examiner’s cited portions, e.g., col. 5, l. 39, col. 3, ll. 26-32; Figs. 7G, and
13; col. 5, ll. 45-46.) None of the cited portions of the reference perform the
step of “tracking accesses to records in the database,” as claimed.
Nonetheless the Examiner maintains that Kolawa’s teaching for accessing a
file is sufficient to meet the claim limitation “tracking accesses to records in
the database.” (See Ans. 10, top to middle.) The Examiner cites “arrays” in
Figure 9 (Ans. 3, middle). However, aside from that notation in the figure,
we find no written description of the “arrays.” (See col. 11, ll. 7-67.)
In light of the absence of evidence to support the Examiner’s finding
of anticipation, we find the Examiner erred in rejecting claim 1.
Accordingly, we reverse the Examiner’s rejection of independent claim 1
over Kolawa. Dependent claims 2 to 7, 9 to 11, 13 to 15, 33, and 34 fall
therewith.

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CONCLUSION OF LAW
Based on the findings of facts and analysis above, the Examiner erred
in rejecting claims 1 to 7, 9 to 11, 13 to 15, 33, and 34 as anticipated by
Kolawa.

DECISION
The Examiner’s rejection under § 102(e) of claims 1 to 7, 9 to 11, 13
to 15, 33, and 34 is reversed.

REVERSED

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