Ex Parte Grey et al

Board of Patent Appeals and Interferences

Nov 23, 2010

10289798 (B.P.A.I. Nov. 23, 2010)

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.
10/289,798 11/07/2002 James A. Grey 5150-73400 1772
7590 11/23/2010
Jeffrey C. Hood
MEYERTONS, HOOD, KIVLIN, KOWERT & GOETZEL PC
P.O. Box 398
Austin, TX 78767-0398
EXAMINER
WEST, JEFFREY R
ART UNIT PAPER NUMBER
2857
MAIL DATE DELIVERY MODE
11/23/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte JAMES A. GREY and DANIEL ELIZALDE
_____________

Appeal 2009-008073
Application 10/289,798
Technology Center 2800
______________

Before: ALLEN R. MACDONALD, ROBERT E. NAPPI, and CARL W.
WHITEHEAD JR. Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or filing a request for rehearing, as
recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper
delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode)
shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-008073
Application 10/289,798

This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 51 through 54, 56 through 61, 63 through 67, 69 through 74, 76
through 80, 82 through 87 and 89.
We affirm.
INVENTION
The invention is directed to a system for performing a plurality of
tests on units under test. See page 4 of Appellants’ Specification. Claim 51
is representative of the invention and reproduced below:
51. A computer-implemented method comprising:
creating a test executive sequence in response to user input,
wherein creating the test executive sequence comprises:
including an auto-schedule block in the test executive
sequence in response to user input; and
including a plurality of test steps in the auto-schedule
block in response to user input, wherein each respective test step
specifies a corresponding test, wherein including the plurality of test
steps in the auto-schedule block configures an execution order for the
plurality of tests steps to be automatically determined during
execution of the test executive sequence;
wherein the method further comprises concurrently performing
the test executive sequence on a plurality of physical units under test
(UUTs), wherein each respective UUT comprises a respective
physical device, wherein said performing the test executive sequence
on the plurality of UUTs comprises performing the following for each
respective UUT of the plurality of UUTs:
automatically determining an order in which to perform the
tests specified by the plurality of test steps on the respective UUT in
response to determining that the plurality of test steps are included in
the auto-schedule block; and
performing the tests specified by the plurality of test steps on
the respective UUT in the determined order.

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REFERENCES
Greenspan US 5,893,157 Apr. 6, 1999
Grey US 2002/0124205 A1 Sep. 5, 2002
Avvari US 2003/0120825 A1 Jun. 26, 2003
Tran US 2003/0160826 A1 Aug. 28, 2003
Coin US 6,697,750 B1 Feb. 24, 2004
Reichman US 6,738,813 B1 May 18, 2004

REJECTIONS AT ISSUE
Claims 51, 57 through 60, 63, 64, 70 through 73, 76, 77, 83 through
86, and 89 stand rejected under 35 U.S.C. § 102(e) as anticipated by Coin.
Answer 3-6.
Claims 52 through 54, 65 through 67, and 78 through 80 stand
rejected under 35 U.S.C. § 103(a) as obvious over Coin in view of Avvari.
Answer 6-8.
Claims 55, 68, and 81 stand rejected under 35 U.S.C. § 103(a) as
obvious over Coin in view of Greenspan. Answer 8-9.
Claims 56, 69, and 82 stand rejected under 35 U.S.C. § 103(a) as
obvious over Coin in view of Tran. Answer 9-10.
Claims 61, 74, and 87 stand rejected under 35 U.S.C. § 103(a) as
obvious over Coin in view of Reichman. Answer 10-11.
Claims 62, 75, and 88 stand rejected under 35 U.S.C. § 103(a) as
obvious over Coin in view of Grey. Answer 11-12.

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ISSUES
Rejection under 35 U.S.C. § 102(e) as anticipated by Coin
Claims 51, 64, 77
Appellants’ contentions, pages 9 through 12 of the Appeal Brief, with
respect to this rejection, present us with the issue: did the Examiner err in
finding that Coin teaches an auto-schedule block in a test executive sequence
where the order of test steps is automatically determined as recited in claim
51?
Claim 57
Appellants’ contentions, on pages 13 and 14 of the Appeal Brief, with
respect to this rejection, present us with the issue: did the Examiner err in
finding that Coin teaches an auto-schedule block as recited in claim 57?
Claim 59
Appellants’ contentions, on pages 14 and 15 of the Appeal Brief, with
respect to this rejection, present us with the issue: did the Examiner err in
finding that Coin teaches an auto-schedule block with a begin step and an
end step as recited in claim 59?
Claim 60
Appellants’ contentions, on pages 15 and 16 of the Appeal Brief, with
respect to this rejection, present us with the issue: did the Examiner err in
finding that Coin teaches an auto-schedule block and a visual indication that
the steps are included in the auto-schedule block as recited in claim 60?

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Rejection under 35 U.S.C. § 103 based upon Coin and Reichman
Appellants’ contentions, on pages 16 and 18 of the Appeal Brief, with
respect to this rejection, present us with the issue: did the Examiner err in
combining Reichman with Coin?

Rejection under 35 U.S.C. § 103 based upon Coin and Tran
Appellants’ contentions, on pages 19 and 20 of the Appeal Brief with
respect to this rejection, present us with the issue: did the Examiner err in
finding that the skilled artisan would modify Coin such that the tests are
ordered based upon available resources?

Rejection under 35 U.S.C. § 103 based upon Coin and Avvari
Appellants’ contentions, on pages 20 and 22 of the Appeal Brief with
respect to this rejection, present us with the issue: did the Examiner err in
finding that Avvari teaches automatically determining an order in which to
perform the test request?

Rejection under 35 U.S.C. § 103 based upon Coin and Grey
Appellants have presented no arguments directed to this rejection in
the Brief. On pages 2 of the Reply Brief, Appellants present arguments
directed to Grey not being prior art. However, those arguments have not
been considered and are deemed waived. Appellants have not explained
why, nor is it apparent that, these arguments were necessitated by a new
point in the Answer or any other circumstance constituting “good cause” for
its belated presentation. See Ex parte Borden, 93 USPQ2d 1473, 1473-74
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(BPAI 2010) (“informative”2) (absent a showing of good cause, the Board is
not required to address argument in Reply Brief that could have been
presented in the principal Brief). Thus, Appellants had ample opportunity to
address them in the Appeal Brief. Accordingly, we affirm this rejection,
pro-forma as Appellants have not properly presented issues for us to
consider.

ANALYSIS
Rejection under 35 U.S.C. § 102(e) as anticipated by Coin
Claims 51, 64, and 77
Appellants’ arguments have not persuaded us of error in the
Examiner’s rejection of claims 51, 64, and 77. The Examiner on pages 14
through 27 of the Answer provides a comprehensive response to Appellants’
arguments. In this response the Examiner states that Appellants’ arguments
rely upon an overly narrow interpretation of the claim limitations. The
Examiner’s response identifies the Examiner’s interpretations of the claimed
limitations and identifies how the Examiner finds that these features are met
by the teachings of Coin. We concur with the Examiner’s claim
interpretation and findings regarding the teachings of Coin. Accordingly,
we sustain the Examiner’s rejection of claims 51, 64, and 77 under 35
U.S.C. § 102(e).

2 The “informative” status of this opinion is noted at the following Board
website: http://www.uspto.gov/ip/boards/bpai/decisions/inform/index.jsp.
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Claim 57
Appellants’ arguments have not persuaded us of error in the
Examiner’s rejection of claim 57. The Examiner on pages 28 through 31 of
the Answer provides a comprehensive response to Appellants’ arguments.
In this response the Examiner finds that Coin’s teaching of a test sequence
corresponds to description in Appellants’ Specification of an auto schedule
block. We concur with the Examiner’s findings. Accordingly, we sustain
the Examiner’s rejection of claims 57 under 35 U.S.C. § 102(e).

Claim 59
Appellants’ arguments have not persuaded us of error in the
Examiner’s rejection of claim 59. The Examiner on pages 31 through 33 of
the Answer provides a comprehensive response to Appellants’ arguments.
In this response the Examiner finds that Coin teaches an auto schedule block
and that it contains a test start sequence which continues until the sequence
is done, which corresponds to the claimed begin and end steps. We concur
with the Examiner’s findings. Accordingly, we sustain the Examiner’s
rejection of claims 59 under 35 U.S.C. § 102(e).

Claim 60
Appellants’ arguments have not persuaded us of error in the
Examiner’s rejection of claim 60. The Examiner on page 34 of the Answer
provides a comprehensive response to Appellants’ arguments. In this
response the Examiner finds that Coin teaches an auto schedule block and
that Figure 12 presents a display that indicates what steps are included in the
auto-schedule block. We concur with the Examiner’s findings.
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Accordingly, we sustain the Examiner’s rejection of claims 59 under 35
U.S.C. § 102(e).

Claims 58, 63, 70 through 73, 76, 83 through 86, and 89
Appellants’ arguments have not addressed the rejection of these
claims under 35 U.S.C. § 102(e), accordingly, we construe Appellants to
have grouped these claims with claim 57 and sustain the Examiner’s
rejection of these claims for the reasons discussed supra with respect to
claim 57.

Rejection under 35 U.S.C. § 103 based upon Coin and Reichman
Appellants’ arguments have not persuaded us that the Examiner erred
in finding that the skilled artisan would combine Reichman with Coin.
Appellants’ arguments are directed to Reichman being non-analogous art as
it is directed to monitoring performance of servers and not units under test.
Brief 16-17. Further, Appellants argue that Reichman does not remedy the
deficiencies in the rejection of claim 57 based on Coin. Brief 17. The
Examiner responds to Appellants’ arguments of on pages 35-39 of the
Answer finding that Coin and Reichman are directed to testing from multiple
locations and thus the two references are concerned with similar problems.
Answer 36-37. We concur with the Examiner’s findings and conclusions.
Further, as discussed above we are not persuaded of error in the rejection of
claim 57. Thus, Appellants’ arguments have not persuaded us of error in the
35 U.S.C. § 103 rejection based upon Coin and Reichman. Accordingly, we
sustain the Examiner’s rejection of claims 61, 74, and 87 under 35 U.S.C.
§ 103.
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Rejection under 35 U.S.C. § 103 based upon Coin and Tran
Appellants’ arguments have not persuaded us that the Examiner erred
in finding that the skilled artisan would modify Coin such that the tests are
ordered based upon available resources. Appellants assert that Coin teaches
that the tests are performed in a fixed order and that the sequence is not
flexible. Brief 19. Further, Appellants state that Tran is concerned with
testing a circuit design, not an actual circuit, and as such is not subject to the
same physical constraints as Coin. Brief 20. The Examiner responds on
pages 41-44 of the Answer finding that the skilled artisan would recognize
that test steps often do not need to be performed in a certain order and that
Coin does not support Appellants’ assertion that the tests in Coin cannot be
performed in a variety of orders. Answer 42. We concur with the
Examiner’s findings, further, we fail to see how the difference in physical
constraints in Tran and Coin, lead to error in the Examiners’ rejection.
Accordingly, we sustain the Examiner’s rejection of claims 56, 69, and 82
under 35 U.S.C. § 103.

Rejection under 35 U.S.C. § 103 based upon Coin and Avvari
Appellants’ arguments have not persuaded us that the Examiner erred
in finding that Avvari teaches automatically determining an order in which
to perform the test request. Appellants’ assert that Avvari teaches that the
tests are performed in the order that they are in a wait queue but that “Avvari
does not teach that the order in which to perform the test execution request
have been placed in the wait queue is determined by anything other than the
order in which they are placed in the wait queue.” Brief 21. The Examiner
responds of on pages 46-48 of the Answer finding that Coin discloses
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automatically determining an order in which to perform the tests, and that
the teaching of Avvari in combination teaches searching for a test. Answer
46-48. We concur with the Examiner’s findings. Accordingly, we sustain
the Examiner’s rejection of claims 52-54, 65-67, and 78- 80 under 35 U.S.C.
§ 103.

CONCLUSION
Appellants have not persuaded us of error in the Examiner’s rejections
of claims 51 through 54, 56 through 61, 63 through 67, 69 through 74, 76
through 80, 82 through 87 and 89.

ORDER
The decision of the Examiner to reject claims 51 through 54, 56
through 61, 63 through 67, 69 through 74, 76 through 80, 82 through 87 and
89 is affirmed.

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Appeal 2009-008073
Application 10/289,798

AFFIRMED

ELD

JEFFREY C. HOOD
MEYERTONS, HOOD, KIVLIN, KOWERT & GOETZEL PC
P.O. BOX 398
AUSTIN, TX 78767-0398
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