Ex Parte Watt

Board of Patent Appeals and Interferences

May 24, 2012

10512694 (B.P.A.I. May. 24, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID WILLIAM WATT
____________

Appeal 2010-002811
Application 10/512,694
Technology Center 2100
____________

Before SCOTT R. BOALICK, JEFFREY S. SMITH, and BRUCE R.
WINSOR, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-002811
Application 10/512,694

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-3, 5, 6, 12, 13, 15, 16, and 20-24, which are all the
claims remaining in the application. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

Invention
Appellant’s invention relates to a method of generating a test program
structure from test requirement data. Abstract.

Representative Claim
1. A method of automatically generating a test program
structure from test requirement data comprising:

translating the test requirement data into a form suitable
for execution within a test programming environment;

defining at least one test in accordance with the test
requirement data; and

deriving conditions from the test requirement data and
inserting the conditions into the test.

Prior Art
Grey US 2003/0093736 A1 May 15, 2003
Dougherty US 2003/0163788 A1 Aug. 28, 2003

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Application 10/512,694

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Examiner’s Rejections
Claims 15, 16, and 24 stand rejected under 35 U.S.C. § 112, second
paragraph.
Claims 1-3, 5, 6, 12, 13, 15, 16, 20, and 24 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Dougherty.
Claims 21-23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dougherty and Grey.

Claim Groupings
Based on Appellant’s arguments in the Appeal Brief, we will decide
the issue presented by the rejection under 35 U.S.C. § 112 on the basis of
claim 15, and we will decide the issue presented by the prior art rejections
on the basis of claim 1.

ISSUES
(1) Did the Examiner err in finding that claims 15, 16, and 24 fail
to satisfy the requirements of 35 U.S.C. § 112, second paragraph?
(2) Did the Examiner err in finding that Dougherty describes
“deriving conditions from the test requirement data and inserting the
conditions into the test” as recited in claim 1?

ANALYSIS
Section 112, second paragraph rejection of claims 15, 16, and 24
The Examiner finds that claims 15, 16, and 24 fail to satisfy the
requirements of 35 U.S.C. § 112, second paragraph. Ans. 3-4. Appellant
has not provided evidence or argument to rebut the Examiner’s finding. We
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sustain the rejection of claims 15, 16, and 24 under 35 U.S.C. § 112, second
paragraph.

Section 102 rejection of claims 1-3, 5, 6, 12, 13, 15, 16, 20, and 24
Appellant contends that Dougherty does not describe “deriving
conditions from the test requirement data and inserting the conditions into
the test” as recited in claim 1. App. Br. 6. According to Appellant, the
claimed “conditions” are pre and post expression labels and DLL calls as
provided on pages 5, 9, 10, and 16 of Appellant’s Specification. See App.
Br. 7-8; Reply Br. 1-3.
The Examiner finds that the test limits disclosed by Dougherty are
imported from a test specification into a test program, which describes
“deriving conditions from the test requirement data and inserting the
conditions into the test” within the meaning of claim 1. Ans. 8. The
Examiner also finds that interpreting the “test conditions” as encompassing
the test limits described by Dougherty is consistent with Appellant’s
Specification, because Appellant has not provided a definition of “test
conditions” that excludes test limits. Ans. 9.
We agree with the Examiner that Appellant has not provided a
definition of “test conditions” in the Specification that excludes the test
limits described by Dougherty. Furthermore, “[t]hough understanding the
claim language may be aided by the explanations contained in the written
description, it is important not to import into a claim limitations that are not
a part of the claim.” SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d
870, 875 (Fed. Cir. 2004). We agree with the findings of fact made by the
Examiner in the Final Rejection and the Examiner’s Answer. We adopt as
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our own (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken and (2) the reasons set forth by the Examiner
in the Examiner’s Answer in response to Appellant’s Appeal Brief. We
concur with the conclusion reached by the Examiner for the reasons given
by the Examiner in the Final Rejection and the Examiner’s Answer.
We sustain the rejection of claim 1 under 35 U.S.C. § 102. Appellant
has not provided arguments for separate patentability of claims 2, 3, 5, 6, 12,
13, 15, 16, 20, and 24, which fall with claim 1.

Section 103 rejection of claims 21-23
Appellant has not provided arguments for separate patentability of
claims 21-23, which fall with claim 1.

CONCLUSIONS OF LAW
(1) The Examiner did not err in finding that claims 15, 16, and 24
fail to satisfy the requirements of 35 U.S.C. § 112, second paragraph.
(2) The Examiner did not err in finding that Dougherty describes
“deriving conditions from the test requirement data and inserting the
conditions into the test” as recited in claim 1.

DECISION
The rejection of claims 15, 16, and 24 under 35 U.S.C. § 112, second
paragraph is affirmed.
The rejection of claims 1-3, 5, 6, 12, 13, 15, 16, 20, and 24 under
35 U.S.C. § 102(b) as being anticipated by Dougherty is affirmed.
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Application 10/512,694

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The rejection of claims 21-23 under 35 U.S.C. § 103(a) as being
unpatentable over Dougherty and Grey is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).

AFFIRMED

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