Bernard Gauf et al.

Patent Trials and Appeals Board

Jul 31, 2019

13718295 - (D) (P.T.A.B. Jul. 31, 2019)

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.
13/718,295 12/18/2012 Bernard Gauf 78163.000009 9705
21967 7590 07/31/2019
Hunton Andrews Kurth LLP
Intellectual Property Department
2200 Pennsylvania Avenue, N.W.
Washington, DC 20037
EXAMINER
DALBO, MICHAEL J
ART UNIT PAPER NUMBER
2865
MAIL DATE DELIVERY MODE
07/31/2019 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BERNARD GAUF,
ELFRIEDE DUSTIN, and DAVID ZWACKI
____________

Appeal 2018-0055771
Application 13/718,295
Technology Center 2800
____________

Before JEFFREY T. SMITH, N. WHITNEY WILSON, and
MONTÉ T. SQUIRE, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1–5, 7, 9, 11–15, 17, and 19. We have jurisdiction under 35 U.S.C.
§ 6.
We AFFIRM.

1 Appellant and the real party in interest is Innovative Defense Technologies,
LLC. (App. Br. 1.)
Appeal 2018-005577
Application 13/718,295

2
Appellant’s invention is directed generally to automated test and retest
procedures and more specifically to an integrated development environment
for automated testing in a virtual environment. (Spec. ¶ 3.) Of the currently
rejected claims, claims 1 and 11 are independent. See Claims Appendix.
Claim 1 illustrates the subject matter on appeal and is reproduced from the
Appeal Brief below:
1. A computer implemented system for automated
test and retesting in a virtual test environment using an
interactive interface provided by a computer processor, the
system comprising:
an input interface, comprising at least one processor,
configured to receive one or more device independent
commands from a user to execute on at least one virtual
machine, where the at least one virtual machine represents a
simulation of multiple physical devices, wherein the one or
more device independent commands comprise at least one test
procedure and at least one system version parameter, wherein
the at least one system version parameter specifies a version of
software to execute on the system under test;
a test and retest engine, comprising at least one
processor, configured to execute the one or more device
independent commands on at least one virtual machine, where
each virtual machine emulates multiple computer environments
on a virtual environment, based at least in part on the at least
one system version parameter; the test and retest engine further
comprising:
a test flow tool configured to generate a plurality of test
flows associated with the test procedure responsive to system
modeling metadata, where the device independent commands
are based on the plurality of test flows, the test flow tool
provides modeling capability through an interface comprising a
canvas display and a palette display, the canvas display
configured to automatically build a corresponding test flow
graphically represented on the canvas display and the palette
display configured to display a collection of modeling
components for building test flows on the canvas display, so
Appeal 2018-005577
Application 13/718,295

3
that the device independent commands are executed from the
plurality of test flows via the virtual environment independent
of specific physical devices;
an output interface, comprising at least one processor,
configured to receive results data responsive to execution of the
one or more device independent commands via a message
based testing protocol and further configured to display the
results to the user; and
an analysis manager, responsive to system modeling
metadata, configured to automatically record test results,
conduct analysis consistent with the system model, and provide
the results data in a predetermined format to the output
interface;
wherein the test and retest engine comprises a software
library that stores software version data associated with one or
more systems under test.
App. Br. 19.

The following rejections are presented for our review:
Claims 1, 2, 4, 5, 7, 9, 11, 12, 14, 15, 17, and 19 are rejected under 35
U.S.C. § 103(a) as unpatentable over Pasternak (US 2011/0296382 A1; publ.
Dec. 1, 2011) in view of Marshall (David Marshall et al., Advanced Server
Virtualization: VMware® and Microsoft® Platforms in the Virtual Data
Center, 55–63 (May 17, 2006) (CRC Press)), Kirtkow (US 2007/0220347
A1; publ. Sept. 20, 2007), and Becker (US 2011/0088014 A1; publ. Apr. 14,
2011).
Claims 3 and 13 are rejected under pre-AIA 35 U.S.C. §103(a) as
unpatentable over Pasternak in view of Marshall, Kirtkow, Becker, and Pillai
(US 2010/0077260 A1; publ. Mar. 25, 2010).
The complete statement of the rejections on appeal appears in the
Final
Appeal 2018-005577
Application 13/718,295

4
Office Action. (Final Act. 2–20.)

OPINION2
The Examiner found Pasternak discloses a computer implemented
system for automated test and retesting in a virtual test environment using an
interactive interface provided by a computer processor. (Final Act. 2–5.)
The Examiner found Pasternak did not disclose each virtual machine
emulates multiple computer environments on a virtual environment. (Final
Act. 5.) The Examiner found Marshall discloses virtual machines that
emulates multiple computer environments on a virtual environment. (Final
Act. 6.) The Examiner found Pasternak and Marshall are silent as to
wherein the test flow tool generates test flows associated with the test
procedure responsive to system modeling metadata, where the commands in
the test flow are device independent commands. The Examiner found
Kirtkow discloses an automated testing system based on the plurality of test
flows wherein the commands in the test flow are device independent
commands. (Final Act. 7.) The Examiner found Pasternak, Marshall, and
Kirtkow are silent as to wherein the test flow tool generates test flows
associated with the test procedure responsive to system modeling metadata,
and wherein the analysis manager analyzes the testing metadata. (Final Act.
8.) The Examiner found Becker discloses a software testing system wherein
the test flow tool generates test flows associated with the test procedure
responsive to system modeling metadata. (Final Act. 8.)

2 Appellant limits the arguments to independent claim 1. Appellant argues
independent claims 1 and 11 are patentable for the same reasons. (App. Br.
8–16.) Separately argued claims will be addressed separately.
Appeal 2018-005577
Application 13/718,295

5

The Examiner concluded:
It would have been obvious to one with ordinary skill in
the art at the time of the invention to modify the invention of
Pasternak in view of Marshall and Kirtkow with the teachings
of Becker, utilizing metadata to specify additional details of the
testing environment/test plan, for the advantageous benefit of
allowing users to easily synthetize particular limitations into the
testing procedure utilizing metadata descriptors. The use of
metadata in computer coding and software testing is
conventional, well-known, and routine in the art.
(Final Act. 9.)
Appellant argues the rejection is improper because the combination of
cited references fails to teach all the claimed limitations. (App. Br. 8–16.)
Appellant specifically argues:
The Office Action fails to address “a test flow tool
configured to generate a plurality of test flows associated with
the test procedure responsive to system modeling metadata
where the device independent commands are based on the
plurality of test flows.” The Office Action does not even
alleged that this claim element is met. The Office Action
admits that Pasternak is silent regarding at least this feature.
See Office Action, at 6. However, the entirety of the claim
element including the phrase “where the device independent
commands are based on the plurality of test flows” is not
addressed by the Office Action. In Becker, the test execution
plan data model can contain testing metadata. Becker, [0030].
However, the Office Action fails to explain or even address
how this relied upon isolated teaching of testing metadata
provides support for “a test flow tool configured to generate a
plurality of test flows associated with the test procedure
responsive to system modeling metadata where the device
independent commands are based on the plurality of test
flows.” Because the Office Action does not address each and
every claim element, the Office Action has failed to meet its
Appeal 2018-005577
Application 13/718,295

6

burden of establishing a prima facie case of obviousness. For
at least this reason, the current rejections are improper and
should be withdrawn.
(App. Br. 13; emphasis original.)
In light of Appellant’s arguments, the dispositive issue on appeal is:
Did the Examiner err in determining that the combination of
Pasternak, Marshall, Kirtkow, and Becker would have suggested “a
test flow tool configured to generate a plurality of test flows
associated with the test procedure responsive to system modeling
metadata where the device independent commands are based on the
plurality of test flows” as required by independent claim1?
We answer this question in the negative for the reasons presented by the
Examiner and add the following:
Pasternak was cited for describing performing software testing using
test scripts response to the system modeling data. The Examiner
determined, and Appellant did not dispute, that it was known in the art of
software testing that a test script is a set of instructions that are performed on
the system to test that the system functions. (Ans. 8; Reply Br. generally.)
The Examiner cited Kirtkow for providing a teaching of the limitations of
wherein the commands are device independent commands based upon a
plurality of test flows in addition to a tool that is configured to generate a
plurality of test flows as it allows a user to build the test flows using
interface windows. (Ans. 8.) The Examiner cited Becker for teaching a test
execution plan data model including metadata was known in the art of
software testing. (Becker ¶ 30.) Consequently, the combined teachings of
the cited prior art would have suggested to a person of an ordinary skill in
Appeal 2018-005577
Application 13/718,295

7
the art a test flow tool configured to generate a plurality of test flows
associated with the test procedure responsive to system modeling metadata
where the device independent commands are based on the plurality of test
flows.
Appellant additionally argues that the Examiner’s reasoning for
combining the cited references to teach/suggest a test flow tool configured to
generate a plurality of test flows associated with the test procedure
responsive to this system modeling metadata is based upon hindsight. (App.
Br. 14.)
Becker exemplifies the concept of using metadata in the generation of
test plans/flow is known by those skilled in the art. (Becker ¶ 30.) Appellant
has not refuted the Examiner’s position (Final Act. 9) that the use of
metadata in computer coding is conventional, well known, and routine in the
art and that adding metadata descriptions allows users to easily synthetize
particular limitations into the testing procedure.

Appellant argues dependent claims 2–5, 7, 9, 12–15, 17, and 19 are
patentable for the same reasons as independent claim 1. (App. Br. 16–17.)
Appellant additionally states, “Moreover, these claims recite additional
features which are not disclosed, or even suggested, by the applied
references.” (App. Br. 16–17.)
Appellant’s statement is directed generally to the features of the
dependent claims. This statement is nothing more than a general allegation
of patentability and is not considered a separate patentability argument. See
37 C.F.R. § 41.37(c)(1)(iv) (“A statement which merely points out what a
claim recites will not be considered an argument for separate patentability of
Appeal 2018-005577
Application 13/718,295

8
the claim.”); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold
that the Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.”).

Appellant argues that dependent claims 3 and 13 are separately
patentable because the cited references fail to show the additional feature of
further comprising at least one system under test executing on a native
environment on hardware. (App. Br. 16–17.)
We do not agree. The Examiner cited Pillai as disclosing a method
for operating a test machine system wherein the plurality of systems of tests
further comprise at least one system under test executing on a native
environment on hardware (Final Act. 19; Pillai ¶ 8). Appellant has not
disputed Pillai describes performing tests on actual hardware for the
advantageous benefit of verifying the testing results on physical systems to
ensure accuracy of the virtual testing environment.
A person of ordinary skill in the art would have reasonably expected
that the testing environments of the cited references could have been
combined as stated by the Examiner. “Obviousness does not require
absolute predictability of success . . . all that is required is a reasonable
expectation of success.” In re Kubin, 561 F.3d 1351, 1359–60 (Fed. Cir.
2009) (citing In re O’Farrell, 853 F.2d 894, 903–04 (Fed. Cir. 1988)
(internal quotation marks and emphasis omitted)).
Accordingly, we sustain the Examiner’s rejections under 35 U.S.C.
§ 103(a) for the reasons given by the Examiner and presented above.
Appeal 2018-005577
Application 13/718,295

9

ORDER
The Examiner’s prior art rejections of claims 1–5, 7, 9, 11–15, 17, and
19 under 35 U.S.C. § 103(a) are 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)(1)(iv).

AFFIRMED