Ex Parte Brady et al

Patent Trial and Appeal Board

Aug 19, 2016

13281478 (P.T.A.B. Aug. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/281,478 10/26/2011
30206 7590 08/23/2016
IBM CORPORATION
ROCHESTER IP LAW DEPT. 917
3605 HIGHWAY 52 NORTH
ROCHESTER, MN 55901-7829
FIRST NAMED INVENTOR
Mark Brady
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.
GB920100059US 1 1204
EXAMINER
GEBRESILASSIE, KIBROM K
ART UNIT PAPER NUMBER
2128
NOTIFICATION DATE DELIVERY MODE
08/23/2016 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):
rociplaw@us.ibm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK BRADY, ALED A. GRIFFITHS, JOEL M. KEEBLE, and
MICHAEL O'CONNOR
Appeal2015-005043
Application 13/281,478
Technology Center 2100
Before THU A. DANG, JUSTIN BUSCH, and ALEX S. YAP,
Administrative Patent Judges.
YAP, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the final rejection
of claims 1-14, which are all the claims pending in this application. We
have jurisdiction under 35 U.S.C. § 6(b)
We reverse.
1 According to Appellants, the real party in interest is International Business
Machines Corp. (Br. 2.)
Appeal2015-005043
Application 13/281,478
STATEMENT OF THE CASE
Introduction
Appellants' invention relates to "testing of software running on
computer systems, which systems interface with one or more hardware
devices." (Spec. 1.) Claim 1 is illustrative, and is reproduced below:
1. A method for testing a computer system, which system
includes an interface supporting connection to one or more
hardware devices, comprising the steps of:
performing a first test which tests operation of said
computer system, said first test being performed by
performing a plurality of discrete software test processes in a
first order of performance;
for each test process of said plurality of discrete
software test processes, by reference to said interface,
recording the hardware device interactions occasioned by the
respective test process;
wherein the method further comprises:
subsequently performing a second test which tests
operation of said computer system, said second test being
performed by performing at least some of said test processes
in a second order of performance different from said first
order of performance, which second order is derived from
said recording of hardware device interactions.
Rejections on Appeal
The following table lists the prior art relied upon by the Examiner in
rejecting the claims on appeal:
Lin et al.
("Lin")
Organ et al.
("Organ")
Amb ilkar et al.
(''Ambilkar'')
US 6,389,379 Bl May 14, 2002
US 7,047,463 Bl May 16, 2006
US 7,904,289 B2 Mar. 8, 2011
2
Appeal2015-005043
Application 13/281,478
Pasternak US 2011/02963 83 Al Dec. 1, 2011
Claims 1, 4, 5, 6, 10, 13, and 14 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ambilkar in view of Organ and further
in view of Pasternak. (See Final Office Action (mailed June 5, 2014) ("Final
Act.") 2-13.)
Claims 2, 3, 7, 8, 9, 11, and 12 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ambilkar in view of Organ and
Pasternak and further in view of Lin. (See Final Act 13-17.)
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred. We are persuaded that the Examiner
erred in rejecting the claims on appeal.
With respect to claim 1, the Examiner finds that even though
"[ n ]either Ambilkar [] nor Organ [] disclose[ s] performing at least some of
said test processes in a second order of performance different from said first
order of performance, which second order is derived from said recording of
hardware device interactions," Pasternak teaches this limitation. (Final Act.
6; Pasternak, i-fi-137, 40.) Appellants contend that the cited passages do not
teach performing the test processes of the second test in an order different
from that of the first test. (Br. 6-13.) The Examiner disagrees and finds
that:
Fig. 4 illustrates run[ing] a test (i.e. first order performance) to
test a component A #410 which is part of host machine,
determine component dependency of component A and
3
Appeal2015-005043
Application 13/281,478
component B #430, based on the determination, retrieve test
result information relating to component B #440 #450, run
another test (i.e. second order performance) to test component B
#460.
In the above recited section, there are two test results:
a. Test result of component A + test result information
relating to component B (i.e. first order performance),
b. Test result information relating to component B #450
(i.e. second order performance) that derived from the first
test result and run the test result information relating to
component B (i.e. second order performance) to test
component B.
(Ans. 3.) Figure 4 of Pasternak is reproduced below.
IN
RUNTIME
400~
410
RUN A TEST (E.G., TEST A) TO TEST A COMPONENT v'
(E G, COMPONENT A)
420
DETECT UNSATISFACTORY PERFORMANCE OR -~j
RESULTS OF TEST A
DETERMINi= COMPONF.NT DF.PF.NDF.NCY OF COMPONENT A 430
{E.G, DETERMINE WHETHER COMPONENT A DEPENDS ON -,,j
(OR IS INFLUENCED BY) ANOTHER COMPONENT
(E.G., COMPONENT B))
ACCORDING TO THE DETERMINED COMPONENT 440
DEPENDENCY, ACCESS, AT A DATABASE, TEST RESULT -'--;
INFORMATION RELATING TO COMPONENT B
RETRIEVE, FROM THE DATABASE, TEST RESULT
INFORMATION RELATING TO COMPONENT B
KUN, ACCOkOING fO rHE ft:Sl RESULT INFORMATION,
ANOTHER TEST (TEST B) TO TEST COMPONENT B
~-----~--------
OBTAIN RESULTS A OF TEST A AND RESULTS B OF TEST B,
AND PROVIDE THE AEIUTY TO COMPARE RESULTS A
WITH RESULTS B
FIG. 4
450
460
--....___.-·
470
•.__,/
Figure 4 depicts "a method for performing runtime access and retrieval of
test result information and performing dynamic testing using the retrieved
result information." (Pasternak ,-r 10.) The Examiner finds that "there are
4
Appeal2015-005043
Application 13/281,478
two tests[,] which are test A (i.e. first order) and test B (i.e. second order)[,]
wherein Test Bis derived from Test A (See: Fig. 4)," and that "Test Bis in
different order and is a subset of Test result of component A." (Ans. 5.)
As an initial matter, we note that "although a method claim
necessarily recites the steps of the method in a particular order, as a general
rule the claim is not limited to performance of the steps in the order recited,
unless the claim explicitly or implicitly requires a specific order." Baldwin
Graphic Systems, Inc. v. Siebert, Inc., 512 F.3d 1338, 1345 (Fed. Cir 2008)
(citing Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323,
1342--43 (Fed. Cir. 2001)). Here, it is clear from the plain reading of the
claim that the step for performing the second test must occur after the first
test is performed. In addition, the limitation at issue also requires the second
test to include "at least some of said test processes" of the first test "in a
second order of performance different from said first order of performance."
In other words, the second test must include some test processes of the first
test and the order of these test processes must be different from that of the
first test.
We agree with Appellants that the portions of Pasternak cited by the
Examiner do not teach or suggest the limitation at issue. Specifically,
paragraph 37 of Pasternak describes Figure 3B, which "illustrates a
transaction sequence for performing runtime access and retrieval of test
result information and performing dynamic testing using the retrieved result
information." We agree with Appellants that this paragraph teaches "that
tests may be run multiple times and results recorded and later retrieved."
(Br. 12.) The paragraph, however, does not teach or suggest a second test
5
Appeal2015-005043
Application 13/281,478
that includes some test processes of the first test and the order of these test
processes (of the second test) is different from that of the first test.
With regard to paragraph 40 of Pasternak, the paragraph also does not
teach or suggest the limitation at issue. Paragraph 40 teaches two different
tests for testing two different components (A and B) and "[t]esting
information may include test scripts of previously-run tests to test
component B." Even assuming arguendo that the "test scripts of previously-
run tests" are test processes, the paragraph does not teach or suggest running
these test processes in a different order.
The Examiner also cites to Figure 4 of Pasternak in the Answer. (See
Ans. 2-7.) Although Figure 4 teaches that Test B may take into account the
results of other tests, it does not teach or suggest running the test processes
(of the other tests) in a different order for Test B.
For the foregoing reasons, we are persuaded of Examiner error in the
rejection of claim 1 and do not sustain the 35 U.S.C. § 103 rejection of claim
1. 2 Independent claims 6 and 10 contain similar limitations at issue and the
Examiner cites to the same passages of Pasternak for the similar limitations.
(Final Act. 9-10, 12-13.) Thus, for the same reason, we do not sustain the
35 U.S.C. § 103 rejection of independent claims 6 and 10, and of claims 2-5,
7-9, and 11-14, which depend from independent claims 1, 6, or 10.
2 Because we do not sustain the Examiner's rejection for the reasons
discussed herein, we need not address Appellants' further arguments. See
Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (finding an
administrative agency is at liberty to reach a decision based on "a single
dispositive issue").
6
Appeal2015-005043
Application 13/281,478
DECISION
The decision of the Examiner to reject claims 1-14 is reversed.
REVERSED
7