Ex Parte Bagley et al

Board of Patent Appeals and Interferences

Apr 18, 2011

10852908 (B.P.A.I. Apr. 18, 2011)

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.
10/852,908 05/25/2004 Elizabeth V. Bagley RSW920040029US1 (155) 5384
46320 7590 04/18/2011
CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487
EXAMINER
BUI, HANH THI MINH
ART UNIT PAPER NUMBER
2192
MAIL DATE DELIVERY MODE
04/18/2011 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 ELIZABETH V. BAGLEY, CHRISTINA R. CARLSON, JAMES
L. JONES, and KAREN A. ROSENGREN
____________________

Appeal 2009-006131
Application 10/852,908
Technology Center 2100
____________________

Before: JOSEPH L. DIXON, LANCE LEONARD BARRY, and
JAY P. LUCAS, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-006131
Application 10/852,908
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STATEMENT OF CASE
The Appellants appeal under 35 U.S.C. § 134 from a rejection of
claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b).

INVENTION
The Appellants describe the invention at issue on appeal as "the
object-oriented automated user interface testing of an application under test
in a functional testing tool." (Spec. [0007])

REPRESENTATIVE CLAIM
1. A functional testing tool comprising a configuration for
producing:
a plurality of methods defining interactions with
individual elements in a user interface to an application under
test;
a plurality of defined actions grouping selected ones of
said methods which are used repeatedly within screens of said
application under test;
at least one task defining a group of related activities in
said user interface; and,
a test case implementing said at least one task with at
least one verification point.

REFERENCES AND REJECTIONS
Rodrigues
Sivakumar
Givoni
US 6,067,639
US 6,219,829
US 7,093,238
May 23, 2000
Apr. 17, 2001
Aug. 15, 2006

Claims 1-7, 10-14, 17, and 18 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Givoni and Rodrigues.
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Claims 8, 9, 15, and 16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Givoni, Rodrigues, and Sivakumar.

CLAIM GROUPING
Based on the Appellants' arguments, we will decide the appeal of
claims 1-18 on the basis of claim 1 alone.

ISSUES
The issues before us are (1) whether the Examiner erred in finding
that Rodrigues teaches at least one task defining a group of related activities
as required by representative claim 1 and (2) whether the Examiner erred in
combining teachings from Givoni and Rodrigues.

FINDINGS OF FACT
Givoni describes its invention as "a testing and validation system to
test a software application under test (AUT) by traversing user interface
displays, or windows, in the Graphical User Interface (GUI) of the AUT
to build a test thread tree." (Col. 2, ll. 60-64.) "The test thread tree is
employed to generate a grid, a script, and a report enumerating each test
case, described further below, and the test is executed by interfacing with the
GUI of the AUT." (Id. at ll. 64-67.)
Rodrigues describes its invention as follows "a method for integrating
automated software testing into a product as it is being developed to thereby
simplify subsequent software product testing." (Col. 1, ll. 7-10.)
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ANALYSIS
We address the aforementioned issues seriatim.

A Task Defining a Group of Related Activities
The question of obviousness is "based on underlying factual
determinations including . . . what th[e] prior art teaches explicitly and
inherently . . . ." In re Zurko, 258 F.3d 1379, 1383 (Fed. Cir. 2001)
(citations omitted).
Here, we agree with the Examiner's following findings.
Rodrigues discloses "At least two functions (group of related
activities) may be defined as part of the data input (task)
interface method. A first function in the data input method can
automatically (action type) generate a desired input. A second
function in data input interface method allows manual (action
type) input of a data value by prompting the test user"
(emphasis added - See Col. 14: 44 - Col. 15: 36).
(Ans. 4.)
The Appellants argue that "[s]ince the Examiner's alleged 'group'
consists of two mutually exclusive (i.e., redundant) activities of either
automatic generation or manual input of a desired input, even assuming
arguendo that this alleged 'group' was implemented, only one of the
activities need be implemented." (Appeal Br.1 5-6.)
Rodrigues, however, discloses "test tools . . . defin[ing] a minimum of
four interface function methods for use by the testing tools in performing the

1 The Appeal Brief reiterates the many of positions of the parties from "the
First Amendment" (Appeal Br. 4) and "the First Office Action." (Id.) This is
neither required by the Rules of Practice nor helpful to the Board. To the
contrary, it was obfuscating to the Board.
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required test operation." (Col. 14, ll. 5-7.) "The basic four interface
functions are: execution, data input, file and memory I/O [i.e., input/output],
and rules." (Id. at ll. 19-20.)
The same reference describes the data input interface method as
follows.
At least two functions may be defined as part of the data input
interface method. These functions are invoked indirectly by the
invocation of the execute interface function when data input is
required. A first function in the data input method can
automatically generate a desired input value. A second function
in the data input interface method allows manual input of a data
value by prompting the test user.
(Id. at ll. 49-55.)
Because Rodrigues discloses the first function and the second function
as part of the same interface method, we are unpersuaded that the functions
are "mutually exclusive" as argued by the Appellants. Furthermore,
"[a]rgument in the brief does not take the place of evidence in the record."
In re Schulze, 346 F.2d 600, 602 (CCPA 1965) (citing In re Cole, 326 F.2d
769, 773 (CCPA 1964)). Here, the Appellants' allegation that "only one of
the activities need be implemented" does not take the place of the reference's
disclosure of implementing both activities as part of the same interface
method. Therefore, we conclude that the Examiner did not err in finding
that Rodrigues teaches at least one task defining a group of related activities
as required by representative claim 1.

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Combining Teachings from Givoni and Rodrigues
The Examiner makes the following findings and conclusion.
It would have been obvious to one having ordinary skill in the
art at the time of the invention was made to combine the
teachings of Rodrigues into the teaching of Givoni because they
are both directed to software testing aspect and are both from
the same field of endeavors such combination would have
enhanced Givoni's testing method because that would provide
more convenient, efficient and time saving as suggested by
Rodrigues . . . .
(Ans. 5.) The Appellants argue that "the Examiner has failed to establish a
nexus between the specific proposed modifications to Givoni, as alleged
[sic] taught by Rodrigues, and the alleged benefits." (App. Br. 9.)
In view of the U.S. Supreme Court’s opinion in KSR Int'l Co. v.
Teleflex Inc., our analysis does not turn upon whether the Examiner has
provided an adequate teaching, suggestion, or motivation to combine the
references. Instead, we view the question before us to be whether sufficient
difference exists between the prior art and the Appellants’ representative
claim to render the claim nonobvious. In KSR, the Supreme Court
reaffirmed that "[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results." KSR Int'l v. Teleflex Inc., 550 U.S. 398, 416 (2007). More
specifically, "when a patent 'simply arranges old elements with each
performing the same function it had been known to perform' and yields no
more than one would expect from such an arrangement, the combination is
obvious." Id. at 417 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282
(1976)).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
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either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.
KSR, 550 U.S. at 417.
Here, the Examiner's finding that Givoni teaches all the limitations of
representative claim 1 sans the "at least one task defining a group of related
activities in said user interface" (Ans. 3-4) is uncontested. "Silence implies
assent." Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539,
572 (1985). As explained regarding the first issue, supra, we agree with the
Examiner's finding that Rodrigues teaches at least one task defining a group
of related activities. It is also uncontested that one of ordinary skill in the art
could have combined the aforementioned elements of Givoni and Rodrigues
by known methods, and that in combination, each element merely performs
the same function as it does separately. We further find that one of ordinary
skill in the art would have recognized that the results of the combination
were predictable. Therefore, we conclude that the Examiner did not err in
combing teachings from Givoni and Rodrigues.

DECISION
We affirm the rejection of claim 1 and those of claims 2-18, which fall
therewith.

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) (2010).

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AFFIRMED

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