Ex Parte Chandra et al

Patent Trial and Appeal Board

Nov 8, 2017

13715206 (P.T.A.B. Nov. 8, 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.
13/715,206 12/14/2012 Satish Chandra IN920120178US1 (790.183) 2751
89885 7590 11/08/2017
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
EXAMINER
GARCIA-GUERRA, DARLENE
ART UNIT PAPER NUMBER
3683
MAIL DATE DELIVERY MODE
11/08/2017 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 SATISH CHANDRA,
KOMMINENI VASANTA LAKSHMI,
NISHANT SINHA,
SAURABH SINHA,
SURESH THUMMALAPENTA, and
ANAND KRISHNA VAISHAMPAYAN
Appeal 2015-006687
Application 13/715,2061
Technology Center 3600
Before HUBERT C. LORIN, MICHAEL W. KIM, and
ROBERT L. KINDER, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Satish Chandra, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1,2, 4—11, 13—19, and 21. Claims 3,12
and 20 were cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
1 The Appellants identify International Business Machines Corporation as
the real party in interest. App. Br. 3.
Appeal 2015-006687
Application 13/715,206
SUMMARY OF DECISION
We AFFIRM and enter a NEW GROUND OF REJECTION.
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for test case creation, the method comprising:
utilizing at least one processor to execute computer code
configured to perform the steps of:
receiving data associated with at least one of a business
requirement and a business scenario as input, wherein the data
comprise at least one of a set of predefined rules;
wherein the data associated with the at least one of a
business requirement and a business scenario are stored as a
linked graph in a repository and each node of the linked graph is
mapped to previously stored data in the repository; and
based on the data, generating at least one or more test cases
as output without any human intervention, wherein the output
comprises a test script for the business requirement or the
business scenario.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Alluri US 2009/0178021 A1 July 9,2009
Gorthi US 2010/0180256 A1 July 15,2010
The following rejections are before us for review:
1. Claims 1, 2, 4—11, 13—19, and 21 are rejected under 35 U.S.C. § 101
as being directed to non-statutory subject matter.
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2. Claims 1, 2, 4—6, 8—11, 13—15, 17—19, and 21 are rejected under 35
U.S.C. § 102(b) as being anticipated by Gorthi.
3. Claims 7 and 16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gorthi and Alluri.
ISSUES
Did the Examiner err in rejecting claims 1, 2, 4—11, 13—19, and 21
under 35 U.S.C. § 101 as being directed to non-statutory subject matter?
Did the Examiner err in rejecting claims 1, 2, 4—6, 8—11, 13—15, 17—
19, and 21 under 35 U.S.C. § 102(b) as being anticipated by Gorthi?
Did the Examiner err in rejecting claims 7 and 16 under 35 U.S.C.
§ 103(a) as being unpatentable over Gorthi and Alluri?
FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.
ANALYSIS
The rejections of claim 9 are reversed pro forma because claim 9 is
indefinite for depending on itself.
The rejection of claims 1, 2, 4—8, 10, 11, 13—19, and 21 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter.
The Appellants argued these claims as a group. See Reply Br. 16—26.
We select claim 1 as the representative claim for this group, and the
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remaining claims 2, 4—8, 10, 11, 13—19, and 21 stand or fall with claim 1.
37C.F.R. §41.37(c)(l)(iv).
Alice Corp. Proprietary Ltd. v. CLS Bank International, 134 S. Ct.
2347 (2014) identifies a two-step framework for determining whether
claimed subject matter is judicially-excepted from patent-eligibility under 35
U.S.C. § 101.
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S. Ct. at 2355.
In that regard, the Examiner determined that the claims are directed to
“the abstract idea of generating test cases.” Ans. 5.
Claims 1—2, 4—11, 13—19 and 21 are directed to a method, an
apparatus and computer program product for generating test
cases for covering enterprise rules and predicates. Although the
claim limitations are among the four statutory classes of
invention, the claims are directed to an abstract idea.
Specifically, the series of steps instructing how to receive data
associated with at least one of a business requirement and a
business scenario as input, generate a link graph based upon
the data, and generate at least one or more test cases as
output would be directed to mathematical
relationships/formulas, which is an example identified by the
Courts as an abstract idea. See paragraph 0036 indicating that
“As such, at least one embodiment of the invention includes
performing an analysis that, under certain assumptions,
computes an over-approximate link graph.” Further, the claims
are essentially directed to comparing new and stored information
and using rules to identity options. See paragraph 0006 of the
specification, indicating that “In summary, one aspect of the
invention provides a method comprising: receiving data
associated with at least one of a business requirement and a
business scenario as input, wherein the data comprise at least one
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of a set of predefined rules; and based on the data, generating at
least one or more test cases as output without any human
intervention, wherein the output comprises a test script for the
business requirement or the business scenario.” The concept of
comparing new and stored information and using rules to identify
options was found to be an abstract idea by the Courts. See
Federal Register/Vol. 79 No. 241. See SmartGene, Inc. v.
Advanced Biological Labs., SA 555 Fed. Appx. 950 (Fed. Cir.
2014) (nonprecedential)[.]
Ans. 5—6 (emphasis added).
The Appellants disagree. “Applicants’ claims are not directed to a
mathematical relationship or formula but rather are directed to generating
test cases for business requirements or business scenarios via generation and
use of a link graph.” Reply Br. 17.
The Appellants’ position is not commensurate in scope with what is
claimed. Claim 1 does not require generating test cases via generation and
use of a link graph.
The Reply Brief includes the following passage:
“receiving data associated with at least one of a business
requirement and a business scenario as input, wherein the data
comprise at least one of a set of predefined rules; generating a
link graph based upon the data; where the link graph comprises
nodes representing application pages and edges representing
possible navigations; and based on the link graph, generating
at least one or more test cases as output without any human
intervention, wherein the output comprises a test script for the
business requirement or the business scenario.” Claim 1.
Reply Br. 18 (emphasis added). One has the impression, from reading this
passage, that claim 1 is being quoted. But claim 1 makes no mention of
generating test cases based on a link graph. Claim 1 calls for generating
test cases “based on the data,” the “data [being] associated with at least one
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of a business requirement and a business scenario as input, wherein the data
comprise at least one of a set of predefined rules.” Claim 1 (emphasis
added). While claim 1 does include a step of “storing the data] as a linked
graph” (and not “generating a link graph” as the Appellants have argued),
the linked graph plays no further role in the “method for test. . . creation,”
as claimed.
This argument — that claim 1 requires generating test cases via
generation and use of a link graph — is a thread running through every
argument in the Reply Brief. Here are but three examples
In Applicants’ view, the present claims, far from being
directed to the allegedly unpatentable abstract idea proposed by
the Office, are directed to a far more particular invention. Here,
there is clearly no risk that the claims will “tie up” the subject
matter of “test case creation,” or pre-empt others from “creating
a test case.” Interim Guidance at page 11. Rather, Applicants’
claims are directed to a specific technological improvement for
test case creation for covering enterprise rules and predicates
wherein once the document is input and rules and predicates are
determined, the system is configured to automatically crawl the
web and any other repository which can be mapped to the
requirement specifications of the document. See Specification at
[0030]. Applicants respectfully submit that the claim language
of the independent claim precludes any reasonable interpretation
of the claim as directed to an abstract idea. Rather, the claims
are directed to a technique providing additional functionality to
a computer, i.e., a computer can automatically generate a test
case via generating a link graph comprising nodes representing
application pages and edges representing possible navigations.
See Claim 1.
Reply Br. 18—19 (emphasis added).
Applicants respectfully submit that such automated
generation of test cases via use of link graphs was not possible
prior to Applicants’ invention.
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Reply Br. 19 (emphasis added).
As in rDDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245 (Fed. Cir. 2014)], Applicants submit that the claims recite
patent eligible subject matter that is “rooted in computer
technology” because Applicant's specific solution involves re­
programming of the computer to permit a system in which a link
graph is generated to create a test case for a business
requirement or scenario. See Claim 1.
Reply Br. 21 (emphasis added).
Because the Appellants’ arguments are premised on claim 1 reciting a
limitation to using a link graph to generate a test case, and because that
premise is faulty because claim 1 does not include such a limitation, the
arguments are consequently unpersuasive in showing that the Examiner’s
determination under step one of the Alice framework that claim 1 is directed
to an abstract idea was in error.
Step two is “a search for an ‘inventive concept’—i.e., an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Alice, 134 S. Ct. at 2355 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72—73 (2012)).
In that regard, the Examiner determined that, in part,
[v]iewed as a whole, the additional claim element(s) do not
provide meaningful limitation(s) to transform the abstract idea
into a patent eligible application of the abstract idea such that the
claim(s) amounts to significantly more than the abstract idea
itself. The claim fails to recite any improvements to another
technology or technical field, improvements to the functioning
of the computer itself, applying the judicial exception with or by
use of a particular machine, effecting a transformation of a
particular article to a different state, adding a specific limitation
other than what is well-understood, routing, and conventional in
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the field, or adding unconventional steps that confine the claim
to a particular useful application; and/or meaningful limitations
beyond generally linking the use of an abstract idea to a
particular environment.
Ans. 7.
In challenging this determination, again the Appellants presume the
claim is limited to generating test cases via a link graph. “The present
claims recite a system and method for creating a test case for a business
requirement or scenario via generation of a link graph that clearly were not
well-understood, routine, and conventional in the field at the time of filing.”
Reply Br. 23. As already explained, claim 1 is not so limited. Accordingly,
the Appellants are unpersuasive in showing the Examiner’s determination
under step two of the Alice framework was in error.
We have considered all of the Appellants’ remaining arguments and
are unpersuaded that they show error in the rejection. Accordingly, the
rejection is sustained.
The rejection of claims 1, 2, 4—6, 8, 10, 11, 13—15, 17—19, and 21 under 35
U.S.C. § 102(b) as being anticipated by Gorthi.
All the claims require storing data as a link graph. The Appellants
argue that Gorthi does not describe this. See App. Br. 14—16. We agree.
Gorthi does not disclose a “link graph” as that phrase is reasonably
and broadly construed. Rather, Gorthi describes “use-case activity
diagrams.” The Examiner equates Gorthi's “use-case activity diagrams” to
the claimed link graph. See Final Act. 8. But they are not the same. As the
Appellants point out, the Specification defines a link graph as “a directed
graph in which nodes represent (server-side) application pages and edges
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represent possible navigations among the actual (hypertext markup language
(HTML)) instances of these pages.” Spec. 11:12—15. “A use-case activity
diagram is a graphical representation of the expected behavior or
functionality or use case scenario of the software application.” Gorthi, para.
22.
Because all the claims requiring storing data as a link graph, and
Gorthi describes not a link graph, but something different, there is a lack of
identity between what is claimed and what Gorthi describes. Accordingly,
anticipation has not been established.
The rejection is not sustained.
The rejection of claims 7 and 16 under 35 U.S.C. § 103(a) as being
unpatentable over Gorthi and Alluri.
Claims 7 and 16 are dependent claims that each include the “link
graph” limitation discussed above. Since the Examiner finds that Gorthi
discloses a “link graph,” but the evidence does not support it, obviousness
has not been established for the subject matter of claims 7 and 16.
The rejection is not sustained.
NEW GROUND OF REJECTION
Claim 9 is rejected under 35 U.S.C. § 112, second paragraph, for
failing to particularly point out and distinctly claim the subject matter which
Appellants regard as the invention.
Claim 9 depends from itself.
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CONCLUSIONS
The rejection of claims 1, 2, 4—8, 10, 11, 13—19, and 21 under 35
U.S.C. § 101 as being directed to non-statutory subject matter is affirmed.
The rejection of claims 1, 2, 4—6, 8, 10, 11, 13—15, 17—19, and 21
under 35 U.S.C. § 102(b) as being anticipated by Gorthi is reversed.
The rejection of claims 7 and 16 under 35 U.S.C. § 103(a) as being
unpatentable over Gorthi and Alluri is reversed.
Claim 9 is newly rejected under 35 U.S.C. § 112, second paragraph,
for failing to particularly point out and distinctly claim the subject matter
which Appellants regard as the invention.
DECISION
The decision of the Examiner to reject claims 1, 2, 4—8, 10, 11, 13—19,
and 21 is affirmed. Claim 9 is newly rejected.
NEW GROUND OF REJECTION
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 “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that the Appellants, 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
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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. . . .
Further guidance on responding to a new ground of rejection can be
found in the MANUAL OF PATENT EXAMINING PROCEDURE
§ 1214.01 (9th Ed., Rev. 07.2015, Nov. 2015).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED; 37 C.F.R, § 41,501b)
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