Ex Parte Apostoloiu et al

Patent Trial and Appeal Board

Apr 30, 2013

11363725 (P.T.A.B. Apr. 30, 2013)

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.
11/363,725 02/28/2006 Laura I. Apostoloiu CA920050103US1 (041) 7822
46320 7590 05/01/2013
CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
EXAMINER
RIAD, AMINE
ART UNIT PAPER NUMBER
2113
MAIL DATE DELIVERY MODE
05/01/2013 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 LAURA I. APOSTOLOIU, XIN CHEN, R. SCOTT HARVEY,
YOUNG WOOK LEE, and KYLE ROBESON
__________

Appeal 2011-001721
Application 11/363,725
Technology Center 2100
___________

Before JUSTIN T. ARBES, JENNIFER S. BISK, and
TRENTON A. WARD, Administrative Patent Judges.

WARD, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-20. The real party in interest is International Business Machines
Corporation. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2011-001721
Application 11/363,725

2

STATEMENT OF THE CASE

The Rejections on Appeal
Claims 1-18 were rejected under 35 U.S.C. § 102(e) as anticipated by
Tillman (US 2006/0242466; filed Apr. 21, 2005).
Claims 19 and 20 were rejected under 35 U.S.C. § 103(a) as
unpatentable over Tillman and Baker (US 6,859,922; issued Feb. 22, 2005).

The Invention
The invention is directed to a reusable test automation framework.
Spec. ¶ [0017]. The invention involves defining multiple tasks and test
scenarios and selecting one test scenario in a test case. Id. Each test
scenario is made up of a selection of defined tasks in a test flow, and each
defined task is made up of application related functions. Id. Claim 9 is
illustrative and is reproduced below, with limitations emphasized:
9. (Original) A test case assembly method for testing an
application, the method comprising:

defining a plurality of tasks, each task ordering a
selection of granular, single purposed application related
functions;

further defining a plurality of test scenarios, each
scenario ordering a selection of the defined tasks in a test flow;
and,

selecting at least one of the defined test scenarios in a test
case.

Appeal 2011-001721
Application 11/363,725

3

DISCUSSION
A. Anticipation Rejection of Claims 1-18 Over Tillman

The Examiner determined that Tillman discloses every element of
claims 1-18, including a testing scenario generator configured to produce
testing scenarios from an assembly of testing tasks and general functions and
a task generator configured to produce the testing tasks. Ans. 4. Appellants
disagree and argue that Tillman does not disclose producing “testing
scenarios from an assembly of the testing tasks and general functions,” as
required by independent claim 1, and “each scenario ordering a selection of
the defined tasks in a test flow,” as required by independent claims 9 and 14.
Appellants argue that the Examiner misconstrued the claim terms
“testing task” and “testing scenario.” Br. 9. Specifically, Appellants argue
that the “Examiner, in comparing claim 1 to Figure 5 of Tillmann, provides
for an implicit claim construction of ‘testing task’ as a ‘control flow path’
and ‘testing scenario’ as a set of ‘control flow paths’ chosen in accordance
with Figure 5.” Br. 9 (quoting Appellants’ Response to Final Office Action
dated Apr. 24, 2009, 10) (emphasis added). Contrary to Appellants’
arguments, the Examiner did not provide an “implicit claim construction of
‘testing task’ as a ‘control flow path’ and ‘testing scenario,’” but rather
provided a mapping of the claim elements to the disclosure in Tillman.
Final Office Action, 7-8. Thus, the Examiner’s citation to the disclosure in
Tillman was simply one example of how Tillman discloses the claimed
“testing tasks” and “testing scenarios.” See Ans. 10-11. Specifically, the
Examiner found that Tillman discloses that a task is created by “representing
the method being tested” as a control flow path, a scenario is created by
Appeal 2011-001721
Application 11/363,725

4

injecting a “precondition,” and a test case is created by choosing one of the
scenarios. Final Office Action, 7 (citing Tillman, Figure 5). Appellants
provide no argument as to why the cited disclosure in Tillman does not
anticipate the claimed limitations. Thus, we are not persuaded of error in the
Examiner’s mapping of the claimed elements to Tillman.
Appellants further argue that one of ordinary skill in the art would not
understand a “testing task” as a “representation of a method being tested”
because a “testing task” is a “task used to test.” Br. 9 (quoting Final Office
Action, 7). Figure 5 of Tillman states at block 510 that the first step in the
testing process is to “[r]epresent method being tested and precondition
method as control flow graphs.” Tillman, Figure 5. Tillman further states
that these control flow graphs (“testing tasks”) are created by analyzing the
source code of the method. Tillman, ¶ [0062]. Certain control flow paths
then form the basis for a “test case.” See Tillman, ¶ [0062].
Even assuming, without deciding, that Appellants’ proposed claim
construction of a “testing task” as a “task used to test” is accurate, Tillman
discloses this claim element as the Examiner found. More particularly, the
“control flow path” is disclosed in Tillman as a set of conditions used to test
software. Thus the “control flow path” is a “task used to test” software
programs. Tillman, ¶¶ [0026-27]. Accordingly, we are not persuaded of
error in the Examiner’s mapping of Tillman’s control flow path to the
claimed “testing task.”
Appellants further argue that “no person of skill in the art would deem
a ‘testing scenario’ as a ‘precondition’-- especially when Figure 5 of Tillman
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Application 11/363,725

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provides that the ‘precondition’ is a ‘precondition METHOD.’” Br. 9-10.
We note that Appellants fail to provide a substantive argument as to why a
“precondition” is not a “testing scenario,” but merely state that a
precondition is not a testing scenario. Br. 9-10. Contrary to Appellants’
unsupported arguments, Tillman discloses that some methods are not
designed for every possible input, and a “precondition” can indicate whether
a method is defined (or used) for a particular input. Tillman, ¶ [0007].
Thus, Tillman does not disclose that a “precondition” is itself a method, but
rather that the “precondition” can be used to define the valid “test scenarios”
in which a particular software program can be tested. See Tillman, ¶ [0050].
Thus, we are not persuaded of error in the Examiner’s mapping of Tillman’s
implementation of a “precondition” on a program to Appellants’ claimed
“testing scenarios.”
Therefore, we sustain the Examiners’ rejection of independent claims
1, 9, and 14, and claims 2-8, 10-13, and 15-18 which depend therefrom and
are not separately argued, as anticipated.

B. Obviousness Rejection of Claims 19 and 20 Over Tillman and Baker

Appellants argue that claims 19 and 20 stand or fall with independent
claims 9 and 14. Br. 10. We, therefore, sustain the rejection of claims 19
and 20 for the same reasons as those discussed above for claims 9 and 14.

Appeal 2011-001721
Application 11/363,725

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ORDER
The Examiner’s decision rejecting claims 1-20 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)(1)(iv).

AFFIRMED

pgc