Ex Parte Farchi et al

Board of Patent Appeals and Interferences

Nov 30, 2007

09990802 (B.P.A.I. Nov. 30, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte EITAN FARCHI, THOMAS JOSEPH PAVELA,
SHMUEL UR, and AVI ZIV
____________

Appeal 2006-2958
Application 09/990,802
Technology Center 2100
____________

Decided: November 30, 2007
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Before LANCE LEONARD BARRY, HOWARD B. BLANKENSHIP,
ALLEN R. MACDONALD, JEAN R. HOMERE, and JAY P. LUCAS,
Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
In a paper filed June 20, 2007, Appellants request reconsideration
under 37 C.F.R. § 41.52 from a Decision of the Board of Patent Appeals and
Interferences dated February 16, 2007 (Decision, hereinafter.)
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In the Decision, the Board affirmed the Examiner’s rejection of claims
1 through 21.
Appellants contend that the Decision does not give sufficient guidance
as to why the many arguments they advanced were inadequate to overcome
the Examiner’s rejections. (Req. Reh’g 1.) Further, Appellants allege that
the Board Decision does not appear to have addressed all of the arguments
that Appellants advanced in the Appeal Brief and Reply Brief. (Id. 2.)
We grant the Request.

ISSUES
First, Appellants argue that “While the Board said the Examiner found
properly that the code persisted across code versions, the Board did not
address Appellants’ detailed argument in this regard, and in particular did
not appear to address specifically Appellants’ arguments that ‘across’ means
‘on both sides of,’ while Chen clearly teaches something less than that.”
(Req. Reh’g 2-3.) Therefore, the first issue is whether Appellants have
shown that the Decision failed to address the argument that Chen’s codes do
not persist across (meaning on both sides of) software versions, as submitted
in the Briefs?
Second, Appellants argue that:
“While the Board chose to focus only on the aspect of the
invention related to the persistence of code coverage tasks,
Appellants’ discussion of code coverage tasks took into account the
dividing, inserting, and creating steps in independent claim 1 and
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independent claim 8 and independent claim 15. The Board’s Decision
addressed none of this. Again, the Board’s Decision focused only on
the aspect of persistence.” (Req. Reh’g 4-5.)

Particularly, Appellants contend that the Decision merely agrees with
the Examiner that Chen’s “basic code entities” are equivalent to the claimed
“code coverage tasks”. However, the Decision does not provide sufficient
details explaining why the two codes are the same. (Id. 4.) Therefore, the
second issue is whether Appellants have shown that the Decision failed to
provide sufficient reasoning to support the conclusion that Chen’s basic code
entities reasonably teach Appellants’ code coverage tasks?
Third, Appellants contend that the Decision does not appear to
address the argument that Winder has nothing to do with code coverage
tasks or basics entities, and therefore would not be helpful in modifying
Chen. (Id. 5.) Therefore, the third issue is whether Appellants have shown
that the Decision failed to address the argument that Winder is not analogous
art, and therefore not combinable with Chen?

FINDINGS OF FACT
The following findings of fact are supported by a preponderance of the
evidence.
The Invention
1. Appellants invented a method, apparatus and article of
manufacture for selective regression testing of a software suite. (Spec. 1.)
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2. Particularly, the invention divides a program source code into a
plurality of basic blocks of codes (code coverage tasks) and assigns a
persistent unique name to each of the plurality code coverage tasks.1 (Id.
12.) The created persistent unique names are then collected across software
versions to identify which subsets of the test suite must be run in order to
test a new version of the software. (Id. 13.)

Prior Art Relied Upon
3. Chen discloses a regression testing method and system for
selecting which test units of an existing software must be re-run in order to
test a new version of the software. (Col. 1, ll. 10-12.)
4. As depicted in Figure 1, Chen teaches partitioning the source code
of the existing software version (30) into basic code entities,2 grouped as a
plurality of test units (46, 48, 50) in a test suite (51). (Col. 2, ll. 47-49.)

1 Appellants’ Specification, at pages 12-13, defines code coverage task as a
“basic block of code for which an execution of a test returns a true value if
the testing requirement of the task is fulfilled and a false value if the testing
requirement of the task is not fulfilled.” “[A] basic block is a set of
consecutive statements with a single entry point (i.e. the first statement) and
a single exit point (i.e. the last statement).”
2 Chen describes each basic code entity as being a function (F) or a non-
function (V) linked together as part of a test unit. (Col. 4, ll. 54-62.) An
entity is considered to be changed if the source code text of the definition of
the entity has changed. (Col. 11, ll. 1-3.) Further, Chen discloses an entity
trace list for each test unit that tracks the entities covered by each test unit.
(Col. 9, ll. 31-35.)
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5. As depicted in Figure 4, Chen discloses the creation of a trace list
(161, 163, 165) for each test unit (160, 162, 164) to keep track of the entities
that are covered by each test unit. (Col. 9, ll. 32-35.)
6. Chen further discloses that each entity has, inter alia, an entity
kind, a name and a checksum. (Col. 9, ll. 1-2). The checksum is used to
determine whether an entity has been changed after a revision to the
software system. (Col. 8, ll. 59-62.)
7. Chen discloses an unchanged entity list (246) for entities which are
unchanged between a first source code program and a second source code
program. (Col. 11, ll. 9-12.)
8. Chen also discloses that two entities match if they have the same
name and entity kind. And, if the checksums of the two entities match, the
source code texts of the two entities are probably identical. (Col. 11, ll. 20-
21, ll. 46-49).
9. Entity attributes are compared across software versions to
determine which test units to re-run depending on which entities were
previously modified. (Col. 2, ll. 47-60; col. 12, ll. 9-18.)
10. Winder discloses using naming conventions in software
management. Particularly, Winder teaches selecting meaningful program
variables and routine names in software development so they can be readily
identified and reused. (Page 84.)

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ANALYSIS
Issue I
We have carefully reviewed our original Decision in light of
Appellants’ remarks. We find that we did address Appellants’ argument
pertaining to the claimed limitation “across”. Further, we find no error in
the analysis or logic set forth in our original Decision regarding the
discussion of such limitation.3 Particularly, the Decision explained in detail
our rationale for agreeing with the Examiner that Chen’s basic code entities
do persist across software versions. (See Decision 9, ll. 1-8.) As noted in
the Decision, we found that Chen discloses, in a current software version,
testing is performed only for test units of a prior software version having at
least one modified entity. (Id.) We also found that test units with no
modified entities in the prior software version are reused in the current
software version. (Id.) Consequently, the test units with no modified
entities are reused in both the prior software version and the current software
version. (Id.) Thus, we concluded that unmodified entities in test units
persist across the two software versions. (Id.) For the foregoing reasons,

3 As detailed in the Findings of Fact section, herein, we have found (once
again) that Chen discloses that test units with no modified entities in a prior
software version are re-used, and they need not be tested in a current
software version. (Findings 7 through 9.) Therefore, it is reasonable to
conclude that unmodified entities in such test units persist across (on both
sides, i.e. used in both prior and current versions) of the two software
versions.
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we decline to modify our discussion of the claim limitation “across” in the
Decision.

Issue 2
In response to Appellants’ request for clarification, we have modified
the prior Decision as follows:
We agree with the Examiner that Chen’s disclosure of the basic code
entities reasonably teaches the claimed “code coverage tasks.” As set forth
in the Findings of Fact section above, we have found that Chen discloses
partitioning the source code of a software version into basic code entities
linked together as functions and non-functions. (Finding 4.) Further, we
have found that Chen discloses creating an entity trace list for each test unit
thereby delimiting the source code by grouping entities covering each
respective test unit. (Id.) Additionally, we have found that entities of
different software versions are compared to one another to determine
whether they have been modified. (Findings 6, 7.) A determination to place
an existing entity on the unchanged entity list in a current software version
depends on whether or not the entity has been modified. In other words,
entities in a prior software version that remain unchanged in the current
version are placed in the unchanged entity list. (Id.) It follows that to persist
across software versions, Chen’s disclosed entities must return a true value
when the comparison indicates that they have not been modified.
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Conversely, they must return a false value when it is determined that they
have been modified.
Therefore, we find no error in the Examiner’s finding that Chen’s
basic code entities teach the claimed code coverage tasks, as defined by
Appellants.4

Issue 3
In response to Appellants’ request for clarification, we have modified
the prior Decision as follows:
Appellants’ arguments are not persuasive. As set forth in the Findings
of Fact section above, we have found that Chen is concerned with
determining which entities in a prior software version are reusable in a
current software version. (Finding 4.) We have also found that Winder5 is
particularly concerned with selecting meaningful program and variable
names so they can be reused in a subsequent program. (Finding 10.) We
find therefore that one of ordinary skill in the art would have readily
recognized that Winder’s teachings would provide Chen’s entities with
meaningful names, which would predictably6 result in reinforcing the

4 See supra note 1.
5 We note that the Examiner relied upon Winder for its teaching of using
naming conventions in software management. (Ans. 13.)
6 The Supreme Court has held that in analyzing the obviousness of
combining elements, a court need not find specific teachings, but rather may
consider "the background knowledge possessed by a person having ordinary
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reusability of such entities in subsequent software versions. Consequently,
we find no error in the Examiner’s conclusion that Chen and Winder can be
properly combined to render the claimed invention unpatentable.

DECISION
In light of the foregoing, we grant Appellants’ Request for Rehearing
to the extent that we modify our prior Decision to further clarify our
rationale for affirming the Examiner’s rejections.

skill in the art" and "the inferences and creative steps that a person of
ordinary skill in the art would employ." KSR Int'l Co. v. Teleflex Inc., 127 S.
Ct. 1727, 1740-41 (2007). To be nonobvious, an improvement must be
"more than the predictable use of prior art elements according to their
established functions." Id. at 1740.

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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).

REQUEST FOR REHEARING GRANTED

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