Ex Parte Benedikt et al

Board of Patent Appeals and Interferences

Jun 30, 2009

10252210 (B.P.A.I. Jun. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL ABRAHAM BENEDIKT, JULIANA FREIRE SILVA,
PATRICE ISMAEL GODEFROID, and AVINASH VYAS
____________

Appeal 2008-3900
Application 10/252,210
Technology Center 2400
____________

Decided1: June 30, 2009
____________

Before LEE E. BARRETT, LANCE LEONARD BARRY, and THU A.
DANG, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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STATEMENT OF THE CASE
The Patent Examiner rejected claims 1-15. The Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).

INVENTION
The invention at issue on appeal, "VeriWeb[,] automatically discovers
and systematically tests all execution paths that can be followed by a user in
a Web application." (Spec. 4., ll. 18-20.) "[U]nlike traditional crawlers[,]
which are limited to testing static links, VeriWeb automatically navigates
through dynamic components of Web sites including . . . form submissions .
. . . (Spec. 4, ll. 20-22.)

ILLUSTRATIVE CLAIM
1. A method for use in the exploration and testing of Web sites
including the steps of:
systematically exploring a dynamic Web site, said Web
site including one or more dynamically generated Web pages;
including
determining possible user actions that may be performed
in a Web page,
determining if any of said user actions correspond to at
least one form,
if so, automatically generating user values to populate
said at least one form,
automatically and systematically executing said
determined user actions, and
testing results of said execution for errors;
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wherein said step of automatically generating user values to
populate said at least one form further comprises:
determining a form schema;
identifying at least one signature that matches the
determined form schema;
selecting one or more predetermined profiles associated
with the identified signature(s);
utilizing the selected predetermined profile(s) to generate
one or more candidate form completions; and
utilizing said candidate form completion(s) to provide
said user values.

PRIOR ART
Monier US 5,974,455 Oct. 26, 1999
Gupta et al US 6,199,079 Mar. 6, 2001
Vine et al US 2002/0056053 May 9, 2002

Sriram Raghavan et al., "Crawling the Hidden Web", 12/2000,
pp. 1-25 (hereinafter Raghavan).

Rational Robot, http://www.rational.com/media/products/robot
/d323_Robot.pdf, 2001, pp. 1-2 (hereinafter “Rational
Software”).

REJECTIONS
Claims 1, 3-6, 11, and 12 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Raghavan and Gupta.

Claims 2, 7, 8, 10, 14, and 15 stand rejected under § 103(a) as being
unpatentable over Raghavan, Gupta, and Rational Software.

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Claim 9 stands rejected under § 103(a) as being unpatentable over
Raghavan, Gupta, and Vine.

Claim 13 stands rejected under § 103(a) as being unpatentable over
Raghavan, Gupta, and Monier.

CLAIM GROUPING
When multiple claims subject to the same ground of rejection
are argued as a group by appellant, the Board may select a
single claim from the group of claims that are argued together
to decide the appeal with respect to the group of claims as to the
ground of rejection on the basis of the selected claim alone.
Notwithstanding any other provision of this paragraph, the
failure of appellant to separately argue claims which appellant
has grouped together shall constitute a waiver of any argument
that the Board must consider the patentability of any grouped
claim separately.

37 C.F.R. § 41.37(c)(1)(vii).

Here, the Appellants argue claims 1, 3-6, and 11 as a group. (Br. 4-8.)
The claims of the group are subject to the same ground of rejection.
Therefore, we select claim 1 as the sole claim on which to decide the appeal
of the group. "With this representation in mind, rather than reiterate the
positions of the parties in toto, we focus on the issues therebetween." Ex
Parte Zettel, 2007 WL 3114962, at *2 (BPAI 2007).

ANALOGOUS ART
The Examiner makes the following findings. "Gupta et al is
analogous art because it is related to automatically processing of web page
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data . . . (Gupta, column 3, lines 11-19)." (Ans. 12.) "Rational Software is
analogous art because it is related to automatic testing of web pages." (Id.)
"Vine et al is analogous art because it is related to detecting and processing
failures related to web sites." (Id. 14.) "Monier is analogous art because it
is related to analyzing web pages." (Id. 15.) The Appellants argue that
Gupta, Rational Software, Vine, and Monier are non-analogous art. (Br. 8,
12, 17, 19.)

ISSUE
Therefore, the issue before us is whether the Appellants have shown
error in the Examiner's findings that Gupta, Rational Software, Vine, and
Monier are analogous art.

LAW
"Whether a reference in the prior art is ‘analogous’ is a fact question."
In re Clay, 966 F.2d 656, 658, (Fed. Cir. 1992) (citing Panduit Corp. v.
Dennison Mfg. Co., 810 F.2d 1561, 1568 n.9 (Fed. Cir. 1987)). Two criteria
have evolved for answering the question: "(1) whether the art is from the
same field of endeavor, regardless of the problem addressed, and (2) if the
reference is not within the field of the inventor's endeavor, whether the
reference still is reasonably pertinent to the particular problem with which
the inventor is involved." Clay, 966 F.2d at 658-59 (citing In re Deminski,
796 F.2d 436, 442, (Fed. Cir. 1986); In re Wood, 599 F.2d 1032 (CCPA
1979)).

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FINDINGS OF FACT ("FFS")
1. The Appellants' "VeriWeb addresses two critical problems:
systematic Web site exploration and automatically filling out forms."
(Spec. 2 ll. 22-23 (emphasis added.))

2. Gupta discloses "[a] method of automatically filling in on-line
forms presented by web pages . . . ." (Abs., ll. 1-2.)

3. The Appellants are involved in "Web-site testing" inter alia. (Spec.
2.)

4. Rational Software "automates GUI [i.e., graphical user interface]
functional testing." (P. 1, col. 1.)

5. Vine "is directed to web failures and in particular to
apparatus and methods for detecting and customizing web failures . . . ."
(¶ 0002.)

6. "Whenever examining a new Web page, the [Appellants'] system
determines all possible actions a user might perform . . . ." (Spec. 2.)

7. Monier's "Web crawler . . . analyz[es] Web pages on the World
Wide Web . . . ." (Col. 1, ll. 10-12.)

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ANALYSIS
The Appellants are involved with the problem of automatically filling
out forms. (FF 1.) Similarly, Gupta automatically fills out on-line forms
presented by web pages. (FF 2.) Therefore, we find that Gupta is
reasonably pertinent to a particular problem with which the inventor is
involved and, thus, is analogous art.

The Appellants are involved in testing Web sites. (FF 3.) Rational
Software automates the testing of a GUI. (FF 4.) Persons skilled in the art
would have known that Web sites and GUIs are implemented via software
program. Therefore, the Appellants and Rational Software are both involved
with testing software, and we agree with the Examiner's finding that
Rational Software is analogous art.

Vine detects Web failures. (FF 5.) Because we agree with the
Examiner that "detecting and processing failures related to web sites" (Ans.
14) is reasonably pertinent to the Appellants' testing of Web sites, we further
agree with the Examiner's finding that Vine is analogous art.

As part of its testing, the Appellants' invention analyzes Web pages,
determining all actions a user might perform. (FF 6.) Monier's Web crawler
also analyzes Web pages. (FF 7.) Because the Appellants and Monier both
analyze Web pages, we find that the latter reference is reasonably pertinent
to a particular problem with which the inventor is involved. Therefore, we
agree with the Examiner's finding that Monier is analogous art.

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CONCLUSION
Based on the aforementioned facts and analysis, we conclude that the
Appellants have shown no error in the Examiner's findings that Gupta,
Rational Software, Vine, and Monier are analogous art.

COMBINING TEACHINGS FROM REFERENCES
The Examiner makes the following findings and conclusions.
At the time of the invention it would have been obvious
to a person of ordinary skill in the art to use the automatic
generation of user values in Gupta et al with the system in
Raghavan et al because a user is not required to fill in multiple
forms and the use [sic] does not have to repeatedly enter the
same information in (Gupta, column 3, lines 11-19).
(Ans. 5.)
At the time of the invention it would have been obvious
to a person of. ordinary skill in the art to use the logging in
Rational Software with the system of Raghavan et al in view of
Gupta et al because the recorded information is used to track
and report about quality assurance testing (Rational, page 1).
(Id. 7.)
At the time of the invention it would have been obvious
to a person of ordinary skill in the art to use the HTTP error
detection in Vine et al with the system in Raghavan et al in
view of Gupta et al because the system improves on current
systems of error detecting by detecting the failure and
dynamically fixing it in view of the user (paragraph 9).
(Id. 9.)
At the time of the invention it would have been obvious
to a person of ordinary skill in the art to use the flagging and
logging in Monier with the system in Raghavan et al in view of
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Gupta et al because speed is increased and latency is decreased
(Monier, abstract).
(Id. 10.)

The Appellants make the following arguments. "[S]ince Raghavan
alone discloses a method for automatic generation of user values to populate
forms, there is no motivation whatsoever for one skilled in the art to look
outside of the automated exploration and testing context to Gupta for such a
method." (Br. 6.) Regarding the Examiner's reasons for combining
teachings from Rational Software, Vine, and Monier with those of Raghavan
and Gupta, the Appellants argue that these reasons "us[e] the benefit
obtained from a combination as a motivation for that combination; this is
impermissible hindsight." (Id. 13, 18, 20.)

ISSUE
Therefore, the issue before us is whether the Appellants have shown
error in the Examiner's combining of teachings from Raghavan, Gupta,
Rational Software, Vine, and Monier.

LAW
The presence or absence of a reason "to combine references in an
obviousness determination is a pure question of fact." In re Gartside, 203
F.3d 1305, 1316 (Fed. Cir. 2000). "[W]hen a patent claims a structure
already known in the prior art that is altered by the mere substitution of one
element for another known in the field, the combination must do more than
yield a predictable result" to be nonobvious. KSR Int'l v. Teleflex Inc., 550
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U.S. 398, 416 (2007) (citing United States v. Adams, 383 U.S. 39, 50-51
(1966)).

"Any judgment on obviousness is . . . necessarily a reconstruction
based on hindsight reasoning, but so long as it takes into account only
knowledge which was within the level of ordinary skill at the time the
claimed invention was made and does not include knowledge gleaned from
applicant's disclosure, such a reconstruction is proper." In re McLaughlin,
443 F.2d 1392, 1395 (CCPA 1971). See also Radix Corp. v. Samuels, 13
USPQ2d 1689, 1693 (D.D.C. 1989) ("[A]ny obviousness inquiry necessarily
involves some hindsight.").

FINDINGS OF FACT
8. Raghavan discloses that "[a] user 'fills out' a form by associating a
value or piece of text with each element of the form. A [web] crawler must
perform a similar value assignment by selecting suitable values from the
domain of each form element." (P. 7, § 3.2.) (emphasis removed).
Generally, the reference's crawler "[g]enerate[s] the best (untried) value
assignment and submit[s] a completed from using that assignment." (P. 10,
Step 4.) More specifically, "the crawler generates value assignments by
textually matching element labels with labels in the L[abel Value Set] table."
(P. 8, § 3.3.)

9. Gupta's " FIG. 3D depicts a flowchart . . . of the process steps for
automated form filing [sic] according to a particular embodiment of the
invention." (Col. 8, ll. 20-23.)
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ANALYSIS
Raghavan discloses a web crawler for automatically generating user
values to fill out on-line forms (FF 8) but does not disclose the specific steps
of claim 1. Gupta teaches a process for automated form filling (FF 9), which
includes the specific steps as explained infra. We find that one of ordinary
skill in the art could have substituted the process of Gupta for that of
Raghavan, and the results of the substitution would have been predictable.

Furthermore, the Examiner's reasons for combining teachings from
Rational Software, Vine, and Monier with those of Raghavan and Gupta are
based on the teachings of Rational Software, Vine, and Monier. These
reasons do not include knowledge gleaned only from the Appellants'
disclosure.

CONCLUSION
Based on the aforementioned facts and analysis, we conclude that the
Appellants have shown no error in the Examiner's combining of teachings
from Raghavan, Gupta, Rational Software, Vine, and Monier.

LIMITATIONS OF CLAIMS 1, 3-7, 11, AND 13
The Examiner makes the following findings.
Gupta et al teaches determining form identifiers (figure 3D,
column 8, lines 20-25), matching an identifier to a pattern
(column 8, lines 26-33), selecting the values to be used in the
form (column 8, lines 26-50), using the values in the form
(column 8, lines 26-50), and filling the form in and providing
the values (column 8, lines 49-52).
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(Ans. 5.)

The Appellants make the following arguments.
Gupta teaches that step 350 determines an appropriate form
identifier for a particular vendor. Then, in step 352, the form
identifier is used to determine one or more corresponding
matching patterns. In step 354, the matching patterns
determined from the form identifier are compared to a web page
containing a form of interest to be filled in. This is
fundamentally different than the claimed arrangement, where
form schema are used to generate at least one signature, at least
one profile is determined from the signature(s), and that profile
is used to generate one or more candidate form completions.
The profiles referred to in Gupta are vendor-specific matching
patterns that are compared to a given web page that contains the
form to be filled in. The recited profiles of the claim
correspond to a signature or signatures that are generated from
form schema determined for the particular form to be filled in.
(Br. 4-5.)

ISSUE
Therefore, the issue before us is whether the Appellants have shown
error in the finding that Gupta discloses identifying at least one signature
and determining a form schema, wherein the signature matches the schema;
selecting at least one predetermined profile associated with the signature;
using the selected profile to generate at lest one candidate form completion;
and using the candidate completion to provide user values.

LAW
The question of obviousness is "based on underlying factual
determinations including . . . what th[e] prior art teaches explicitly and
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inherently . . . ." In re Zurko, 258 F.3d 1379, 1383 (Fed. Cir. 2001). "'A
prima facie case of obviousness is established when the teachings from the
prior art itself would appear to have suggested the claimed subject matter to
a person of ordinary skill in the art.'" In re Bell, 991 F.2d 781, 783 (Fed.
Cir. 1993) (quoting In re Rinehart, 531 F.2d 1048, 1051 (CCPA 1976)).

FINDINGS OF FACT
10. "[I]n a step 352 [of Gupta], [a] form identifier . . . is used to
determine one or more corresponding matching patterns using relationship
70. Relationship 70 associates form identifier form name 72, which will be
the form identifier determined in step 350, with pattern 74. Next, in a step
354, pattern 74 is matched against a page web page containing a form of
interest which is to be filled in." (Col. 8, ll. 27-34.) "[I]n a step 358, the
page is parsed in order to obtain a plurality of attributes." (Id. ll. 38-39.)

11. "Then, in a step 359, properties are identified using relationship 80
to identify those required to fill in the target form." (Id. ll. 39-41.)

12. "In a step 360, a value is obtained for each property using
relationship 90 by matching the form identifier to a form name 94 and
reading property—value pairs 96, 98 and 99." (Id. ll. 41-44.)

13. "Next, in a step 362, the properties determined in step 358 are
transformed using relationship 80 to yield values for each attribute in the
target form by applying transformation function 88 corresponding to
property name 86 matching the property of interest in relationship 80 for the
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particular form identifier form name 82. The result is used to fill in the
attribute corresponding to attribute name 84. Finally, in a step 364, the
target form is filled in with property values obtained in step 362." (Id. ll. 43-
51.) Figure 3D labels these property values as "user values."

ANALYSIS
As aforementioned, Gupta teaches a process for automated form
filling. (FF 9.) The process includes steps of determining at least one
matching pattern, using the matching pattern to identify a web page
containing a form of interest, and parsing the web page to obtain attributes.
(FF 10.) We find that using the matching pattern to identify a web page
containing a form of interest constitutes matching a signature to the form as
claimed. Therefore, we further find that these steps would have suggested
the claimed steps of identifying at least one signature and determining a
form schema, wherein the signature matches the schema.

The reference's process also identifies properties required to fill in the
target form. (FF 11.) We find that the required properties constitute a
profile as claimed and that the properties are associated with patterns for
identification. Therefore, we find that such identification of properties
would have suggested the claimed selecting at least one predetermined
profile associated with the signature.

Gupta's process obtains a value for each property. (FF 12.) We find
the obtaining of values would have suggested the claimed use of the selected
profile to generate at least one candidate form completion.
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The reference's process transforms the properties to yield values for
each attribute in the target form and fills-in the target form with the user
values. (FF 13.) We find that the values for each attribute in the target form
constitute at least one candidate form completion as claimed. We further
find that the yielding of the values would have suggested the claimed step of
using the selected profile to generate at least one candidate form completion.
We also find that the filling-in of the form with the values would have
suggested the claimed step of using the candidate completion to provide user
values.

CONCLUSION
Based on the aforementioned facts and analysis, we conclude that the
Appellants have shown no error in the finding that Gupta discloses
identifying at least one signature and determining a form schema, wherein
the signature matches the schema; selecting at least one predetermined
profile associated with the signature; using the selected profile to generate at
lest one candidate form completion; and using the candidate completion to
provide user values.

LIMITATIONS OF CLAIM 12
The Examiner finds that "Raghavan et al teaches generating values
and based on the response assigning variables for the fields (section 4,
page 10, steps 1-3)." (Ans. 12.) The Appellants argue that Raghavan "fails
to teach or suggest the limitations of claim 12 directed toward . . . generating
a set of partial matches and selecting a match from said set of partial
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matches. Further, Gupta fails to supplement these fundamental deficiencies
of Raghavan . . . ." (Br. 9.)

ISSUE
Therefore, the issue before us is whether the Appellants have shown
error in the Examiner's finding that Raghavan teaches generating a set of
partial matches and selecting a match therefrom.

LAW
"The Patent and Trademark Office (PTO) must consider all claim
limitations when determining patentability of an invention over the prior
art." In re Lowry, 32 F.3d 1579, 1582 (Fed. Cir. 1994) (citing In re Gulack,
703 F.2d 1381, 1385 (Fed. Cir. 1983)).

ANALYSIS
The Examiner does not address, let alone show, that Raghavan and
Gupta would have suggested the limitations of generating a set of partial
matches and selecting a match therefrom.

CONCLUSION
Based on the aforementioned facts and analysis, we conclude that the
Appellants have shown error in the Examiner's finding that Raghavan
teaches generating a set of partial matches and selecting a match therefrom.

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LIMITATIONS OF CLAIMS 2, 14, AND 15
The Examiner admits that the combination of Raghavan and Gupta
"fails to teach storing actions and states explored." (Ans. 7.) He finds that
"Rational Software teaches logging all test results for later review which one
of ordinary skill in the art can interpret to include a state-space path from an
initial Web page (Rational, page 2, column 1, paragraph 3)." (Id. 14.) The
Appellants argue that Rational Software "does not teach or suggest . . .
detecting when a prescribed state search depth is reached or that an error has
been detected, and as a result of said detecting, re-initializing exploration
from a predetermined initial URL" (Br. 11), i.e. uniform resource locator.
They also argue that the reference "fails to meet the . . . limitations of
claim 14 directed to the storage of a scenario defining a state-space path
from an initial Web page to an error.” (Id. 16.)

ISSUE
Therefore, the issue before us is whether the Appellants have shown
error in the Examiner's finding that Rational Software teaches detecting
when a prescribed state-space depth is reached and, as a result of said
detecting, re-initializing an exploration from a predetermined URL or that
the reference teaches storing a scenario defining a state-space path from an
initial Web page to an error.

LAW
"A rejection based on section 103 clearly must rest on a factual basis. .
. ." In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). "The Patent Office
has the initial duty of supplying the factual basis for its rejection. It may not
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. . . resort to speculation, unfounded assumptions or hindsight reconstruction
to supply deficiencies in its factual basis." Id.

FINDING OF FACT
14. Rational Software discloses that "Rational Robot automatically
logs all test results." (P. 2, col. 1, ¶ 3.)

ANALYSIS
As aforementioned, the Examiner admits that Raghavan and Gupta
fail to teach the limitations of claims 2 and 14. The part of Rational Robot
on which he relies merely discloses automatically logging all test results.
(FF 14.) The part mentions neither a prescribed state-space depth re-
initializing an exploration from a predetermined URL, nor storing a scenario
defining a state-space path from an initial Web page to an error.
His aforementioned finding that one of ordinary skill in the art can interpret
the logged test results to include a state-space path from an initial Web page
strikes us as speculation or unfounded assumption, which cannot remedy the
deficiencies in the rejection.

CONCLUSION
Based on the aforementioned facts and analysis, we conclude that the
Appellants have shown error in the Examiner's finding that Rational
Software teaches detecting when a prescribed state-space depth is reached
and, as a result of said detecting, re-initializing an exploration from a
predetermined URL or that the reference teaches storing a scenario defining
a state-space path from an initial Web page to an error.
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DECISION
We affirm the rejections of claims 1, 3-11, and 13. In contrast, we
reverse the rejections of claims 2, 12, 14, and 15.

No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART.

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