Ex Parte Lee

Patent Trial and Appeal Board

Jul 27, 2017

13036383 (P.T.A.B. Jul. 27, 2017)

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.
13/036,383 02/28/2011 Vernon A. Lee SNPS-1341US01 4826
36503 7590
PVF - SYNOPSYS, INC
c/o PARK, VAUGHAN, FLEMING & DOWLER LLP
2820 FIFTH STREET
DAVIS, CA 95618-7759
EXAMINER
BLOSS, STEPHANIE E
ART UNIT PAPER NUMBER
2864
NOTIFICATION DATE DELIVERY MODE
07/31/2017 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):
j eannie @parklegal. com
wendy@parklegal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VERNON A. LEE
Appeal 2016-007618
Application 13/036,383
Technology Center 2800
Before TERRY J. OWENS, MICHAEL P. COLAIANNI, and
SHELDON M. McGEE, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’
rejection of claims 1—7, 9—16, 18—23, and 25—28. We have jurisdiction
under 35 U.S.C. § 6(b).
The Invention
The Appellant’s claimed invention is directed toward determining a
subset of tests for testing a circuit design. Claim 1 is illustrative:
1. In an electronic design automation (EDA) tool, a method
for determining a subset of tests for testing a circuit design, the
method comprising:
the EDA tool in a computer receiving (1) a set of objects
in the circuit design, (2) for each object in the set of objects, a
set of tests that covers the object, and (3) coverage information
Appeal 2016-007618
Application 13/036,383
that specifies which object in the circuit design is covered by
which test;
the EDA tool determining a first subset of tests based on
the coverage information, wherein said determining the first
subset of tests comprises, for each object in the set of objects,
selecting only a first pre-determined number
of tests that cover the object when the cardinality
of the set of tests that covers the object is greater
than the first-predetermined number, and
selecting all tests that cover the object when
the cardinality of the set of tests that covers the
object is less than or equal to the first
pre-determined number; and
the EDA tool determining a second subset of tests by
repeatedly performing a set of operations, comprising:
selecting a test in the set of tests, and
removing, from the set of objects, one or
more objects that are covered by the selected test
according to the coverage information.
Ozmizrak
Patil
Lam
Episkopos
The References
US 5,831,998
US 2003/0051188 A1
US 6,983,216 B2
US 7,886,272 B1
Nov. 3, 1998
Mar. 13, 2003
Jan. 3, 2006
Feb. 8,2011
The Rejections
The claims stand rejected under 35 U.S.C. § 103 as follows:
claims 1—3, 6, 7, 9, 10-12, 15, 16, 18, 19, 22, 23, and 25 over Episkopos in
view of Ozmizrak, claims 4, 13, and 20 over Episkopos in view of Ozmizrak
and Lam, and claims 5, 14, and 21 over Episkopos in view of Ozmizrak and
Patil.
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Application 13/036,383
OPINION
We reverse the rejections and, under 37 C.F.R. § 41.50(b), enter a new
ground of rejection.
Rejections under 35 U.S.C. § 103
We need address only the independent claims (1, 10, and 19).1
The Examiner finds that Episkopos discloses “a computer receiving a
set of objects and for each object in the set of objects, a set of tests that
covers that object (Episkopos Col 24 line[s] 10-11) where fetching data from
the test code archive file and/or database is the computer receiving the test
and object data'1'’ (Final Act. 2).
That portion of Episkopos discloses (col. 24,11. 5—12):
Each of the coded test sets generated using the test data
generator 1328 is subsequently provided to a code tester 1348
for use in testing the software code 1310 (or a translation
thereof). However, in one embodiment, the test data generator
1328 may be instructed to output its generated test sets to a test
code archive 1344 such as a file, or database from which these
tests sets are then fetched by the code tester 1348 for use in
testing the software code 1310 (or a translation thereof).
The Examiner does not establish that this portion of Episkopos discloses a
set of tests that covers each object in a set of objects. Episkopos discloses
that “the method and system is a ‘relaxation’ of the prior art code coverage
estimation technique in that, instead of guaranteeing which code units will
be executed, the system and method can ensure that at least a certain number
of code units will be executed” (col. 6,11. 61—65) and that “the relaxation
1 The Examiner does not rely upon Lam or Patil for any disclosure that
remedies the deficiency in Episkopos and Ozmizrak as to the limitations in
the independent claims (Final Act. 5—6).
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Application 13/036,383
estimation generally does not guarantee which code units will be executed
(when a test case is generated that forces a particular code unit to be
executed), but instead generally guarantees that at least a certain number of
code units will be executed” (col. 6,1. 65 — col. 7,1. 2). The disclosure that
the method does not guarantee which code units will be executed but, rather,
ensures that at least a certain number of code units will be executed, appears
to be contrary to the Examiner’s finding that Episkopos discloses a set of
tests which covers each object in a set of objects (Ans. 2) and likewise
appears to be contrary to the Examiner’s finding that Episkopos discloses
“determining a first subset of tests to cover an object (Episkopos Col 7
line[s] 13-15), and selecting all tests that cover the object when cardinality
of the set of tests that covers the object is less than or equal to the first
predetermined number (Episkopos Col 6 line 64-64 [sic] where the certain
number of code units to be executed is the predetermined number, Episkopos
Col 7 lines 6-15 where the corresponding set satisfying the constraints
would be the entire set if the predetermined number is larger than the
available number'1'’ (Final Act. 2—3).2
2 Episkopos’ disclosure at column 7, lines 3—15 is:
In a third embodiment, a method for generating test cases for testing
software code is provided that includes the steps of:
(a) identifying a path through the software code;
(b) determining constraints in the set of code units that, if satisfied,
cause the path to be executed;
(c) solving the constraints for determining input data to the software
code; and
(d) determining a corresponding data set satisfying the constraints;
and
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Application 13/036,383
The Examiner finds that Episkopos discloses “that a certain number of
these units of code are utilized to test a path (see Episkopos col 6 line 64 and
col 7 lines 6-15) which is a disclosure of a predetermined number of test
codes for the path in question” (Ans. 2).
Episkopos’ code units are software code in a tested software code
path, not test codes for testing software code (col. 4,1. 52 — col. 5,1. 5;
col. 7,11. 3-15).
The Examiner finds that Ozmizrak “discloses test selection based on
coverage information (see Ozmizrak abstract)” (Ans. 3) and “explicitly
discloses a determination of coverage of a test (see Ozmizrak col 5
line[s] 19-21 step ///)” (id.).
Ozmizrak determines a quasi-optimal number of test cases which
covers the most interactions of elements within a system to be tested
(Abstract; col. 1,11. 4—6) and uses a test case selector (36) to select from K
test cases the one covering the largest number of pairs in a set of uncovered
pairs U (col. 5,11. 22—24). The Examiner does not establish the relevance of
those coverages to the Appellant’s recited “coverage information that
specifies which object in the circuit design is covered by which test.”
The Examiner finds that Ozmizrak “explicitly assigns a cardinality to
a set of test[s] (see Ozmizrak col 3 line 8 and col 4 lines 61-62)” (Ans. 3).
Those portions of Ozmizrak disclose that N sets each having M,
members are input to a test case. The Examiner does not establish the
(e) generating, from the data set, test code for executing the software
code in a manner that causes execution of the software code to perform the
set of code units.
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relevance of that disclosure to the Appellant’s recited test set cardinality and
first predetermined number of tests.
Thus, the Examiner has not set forth a factual basis which is sufficient
to support a conclusion of obviousness of the Appellant’s claimed invention.
See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on
section 103 clearly must rest on a factual basis, and these facts must be
interpreted without hindsight reconstruction of the invention from the prior
art”). Accordingly, we reverse the rejections.
New ground of rejection
Under 37 C.F.R. § 41.50(b) we enter the following new ground of
rejection.
Claim 1 is rejected under 35U.S.C. § 101 as failing to claim
patent-eligible subject matter.
“Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.” 35 U.S.C. § 101. The Supreme Court stated in
Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010) that “[t]he Court’s precedents
provide three specific exceptions to § 101 ’s broad patent-eligibility
principles: Taws of nature, physical phenomena, and abstract ideas.’
[Diamond v.] Chakrabarty, [447 U.S. 303,] 309, 100 S. Ct. 2204 [(1980)].”
Determining whether a claimed invention is patent-eligible subject matter
requires determining whether the claim is directed toward a patent-ineligible
concept and, if so, determining whether the claim’s elements, considered
both individually and as an ordered combination, transform the nature of the
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claim into a patent-eligible application. See Alice Corp. v. CIS Bank Int 7,
134 S. Ct. 2347, 2350 (2014).
The Appellant’s claim 1 is directed toward a patent-ineligible concept,
i.e., an abstract idea. Claim l’s EDA tool which, the claim states, is in a
computer, can be code and/or data stored in a computer-readable medium
and be partially or fully embodied in hardware modules or apparatus
(Spec. 1 63), and claim l’s recited objects “can generally be anything that is
desired to be tested. For example, an object can be a block of code, a signal,
a variable, a specific set of variable assignments, user-defined cover groups,
etc.” (Spec. 143). The remainder of claim 1 recites using the EDA tool to
implement the abstract ideas of selecting a desired number of tests and
removing one or more objects covered by a selected test. As indicated in
Alice, applying an abstract idea using a computer does not render the
abstract idea patent-eligible subject matter. Alice, 134 S.Ct. at 2358
(“Stating an abstract idea ‘while adding the words “apply if” is not enough
for patent eligibility. Mayo, supra, at----- , 132 S.Ct., at 1294. Nor is
limiting the use of an abstract idea ‘“to a particular technological
environment.”’ Bilski, supra, at 610-611, 130 S.Ct. 3218. Stating an
abstract idea while adding the words ‘apply it with a computer’ simply
combines those two steps, with the same deficient result.”).
The Appellant’s claim l’s elements, considered both individually and
as an ordered combination, do not transform the nature of the claim into a
patent-eligible application. Claim 1 includes only the EDA tool, objects,
and abstract ideas pointed out above.
Claim 1, therefore, claims patent-ineligible subject matter. We leave
it to the Examiner to address the other claims.
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DECISION/ORDER
The rejections under 35 U.S.C. § 103 of claims 1—3, 6, 7, 9, 10-12,
15, 16, 18, 19, 22, 23, and 25 over Episkopos in view of Ozmizrak, claims 4,
13, and 20 over Episkopos in view of Ozmizrak and Lam, and claims 5, 14,
and 21 over Episkopos in view of Ozmizrak and Patil are reversed. A new
ground of rejection of claim 1 has been entered under 37 C.F.R. § 41.50(b).
It is ordered that the Examiner’s decision is reversed.
This decision contains a new ground of rejection pursuant to
37 C.F.R. §41.50(b).
37 C.F.R. § 41.50(b) provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
REVERSED: 37 C.F.R, § 41.50(b)
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