Ex Parte Farnsworth

Patent Trial and Appeal Board

Nov 15, 2017

13599351 (P.T.A.B. Nov. 15, 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.
13/599,351 08/30/2012 Jared M. Farnsworth 22562-674/2012-022 7367
96411 7590 11/15/2017
Dinsmore & Shohl LLP
255 East Fifth Street, Suite 1900
Cincinnati, OH 45202
EXAMINER
KO, CHAE M
ART UNIT PAPER NUMBER
2114
MAIL DATE DELIVERY MODE
11/15/2017 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 JARED M. FARNSWORTH1
Appeal 2016-005023
Application 13/599,351
Technology Center 2100
Before ERIC S. FRAHM, LARRY J. HUME, and JAMES W. DEJMEK,
Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—18 and 20, which constitute all the claims
pending in this application. Claim 19 has been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest in this appeal is the
assignee, Toyota Motor Engineering & Manufacturing North America, Inc.
Appeal 2010-003230023
Application 11/045,514
Exemplary Claim
Appellant’s disclosed invention pertains to software validation (i.e.,
error checking) for integrated software in vehicles before the vehicles are
sold to consumers (Spec. 12). Claims 1, 8, and 15 are independent and all
pertain to a method (see, e.g., claim 1); a system with a test computing
device, memory, and logic to perform a method (see, e.g., claim 8); and a
non-transitory computer-readable medium storing logic executed by a test
computing device to perform a method (see, e.g., claim 15), for state based
test case generation for software validation (Spec. Tflf 1—3; Abstr.; Title). An
understanding of the invention can be derived from a reading of exemplary
claim 1, which is reproduced below with emphases and bracketed lettering
added to disputed portions of the claim:
1. A method for state based test case generation for
software validation comprising:
determining, by a test computing device, a first input and
a first input type for a program block of software for creating a
test case, wherein the first input type includes a state based
input;
[A] determining, by the test computing device,
permutations of values for the first input, based on the first
input type',
implementing, by the test computing device, the test case
with the state based input, wherein implementing the test case
comprises applying the permutations of values for the first input
to the program block;
[B] determining, by the test computing device, whether
the test case meets a predetermined level of modified
condition/decision coverage (MC/DC); and
providing, by the test computing device, an indication of
whether the test case meets the predetermined level of MC/DC.
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Appeal 2010-003230023
Application 11/045,514
Remaining independent claims 8 and 15 recite similar limitations as
recited in claim 1.
The Examiner’s Rejections
(1) The Examiner rejected claims 1—10 and 13 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Cleaveland (US
2005/0160321 Al; published July 21, 2005), Lucas Albertins de Lima, et al.,
A Permutation Technique for Test Case Prioritization in a Black-box
Environment, 2nd Brazilian Workshop on Systematic and Automated
Software Testing, Sections 1—5, pp. 1—10 (2008) (hereinafter, “Lima”), and
Matt Staats, et al., On the Danger of Coverage Directed Test Case
Generation, Proceedings of the 15th International Conference on
Lundamental Approaches to Software Engineering, Sections 1—8, pp. 1—15
(2012) (hereinafter, “Staats”). Pinal Act. 2—13; Ans. 2—13.
(2) The Examiner rejected claims 11 and 12 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Cleaveland, Lima, Staats, and
Osborne, II (US 6,934,934 Bl; issued Aug. 23, 2005) (hereinafter,
“Osborne”). Pinal Act. 13—15; Ans. 13—15.
(3) The Examiner rejected claims 14—18 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Cleaveland, Lima, Staats, and
Chon (US 2006/0212540 Al; published Sept. 21, 2006). Pinal Act. 15—17;
Ans. 15-17.
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Application 11/045,514
(4) The Examiner rejected claim 202 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Cleaveland, Lima, Staats, Chon,
and Osborne. Final Act. 17—18; Ans. 17—18.
Principal Issue on Appeal
Based on Appellant’s arguments in the briefs (App. Br. 5—12; Reply
Br. 2—5) in response to the Examiner’s rejections (Final Act. 2—18), the
following principal issue is presented on appeal:3 4
Did the Examiner err in rejecting (i) claims 1—10 and 13 over the
combination of Cleaveland, Lima, and Staats; and (ii) claims 11, 12, 14—18,
2 We note claim 20 improperly depends from canceled claim 19 (see App.
Br. 16). Because claim 20 recites “the user interface” which occurs for the
first time in claim 19 which depends from claim 18 (see claim 18 reciting “a
user interface for receiving the first input”), we consider claim 20 to depend
from claim 18. We take this incorrect claim dependency to be a harmless
error which will not alter the outcome of our decision, and we will decide
claim 20 on the same basis as claims 15 and 18 from which claim 20
ultimately depends.
3 Appellant argues claim 1—10 and 13 as a group, and argues only the merits
of claim 1 (App. Br. 5—10), relying on these arguments for the patentability
of the remaining claims (see App. Br. 10). Independent claims 1 and 8 each
recite similar limitations pertaining to state based test case generation for
software validation including determining steps [A] and [B] (see, e.g.,
claim 1). Accordingly, we select claim 1 as representative of the group of
claims 1—10 and 13 rejected over Cleaveland, Lima, and Staats. 37 C.F.R.
§ 41.37(c)(l)(iv). Because (i) Appellant relies on the arguments presented
as to claims 1 and/or 8 for the patentability of claims 11, 12, and 14 (see
App. Br. 10-11); and (ii) the rejection of claims 11, 12, and 14 (which all
depend from claim 8) relies upon the same base combination used for
claim 1, we decide the outcome of claims 11, 12, and 14 on the same basis
as representative independent claim 1.
Appellant presents separate arguments for independent claim 15, and
relies on those arguments for the patentability of claims 16—18 and 20 which
depend from claim 15 (see App. Br. 10-11). We consider Appellant’s
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Appeal 2010-003230023
Application 11/045,514
and 20 over the same base combination modified by various other
references, because the base combination fails to teach or suggest the
disputed limitations of a method for state based test case generation for
software validation including determining steps [A] and [B], as recited in
representative independent claims 1 and 15?
ANALYSIS
We have reviewed the Examiner’s rejections (Final Act. 2—18;
Ans. 2—18) in light of Appellant’s contentions in the Appeal Brief (App.
Br. 5—12) and the Reply Brief (Reply Br. 2—5) that the Examiner has erred,
as well as the Examiner’s response to Appellant’s arguments in the Appeal
Brief (Ans. 18—21).
We disagree with Appellant’s arguments as to independent claims 1,
8, and 15. With regard to representative independent claims 1 and 15, we
adopt as our own (1) the findings and reasons set forth by the Examiner in
the action from which this appeal is taken (claim 1: Final Act. 2—5; Ans.
2-4) (claim 15: Final Act. 8—12, 16—18; Ans. 8—11, 16—17), and (2) the
reasons set forth by the Examiner in the Examiner’s Answer in response to
the Appellant’s Appeal Brief (claim 1: Ans. 18—20) (claim 15: Ans. 21). We
reference to independent claim 14 (see App. Br. 11) to be harmless error,
and take Appellant’s arguments as to claims 16—18 and 20 as relying on the
arguments presented for independent claim 15 from which claims 16—18 and
20 depend. Accordingly, we select claim 15 as representative of the group
of claims 15—18 and 20 rejected over the base combination of Cleaveland,
Lima, Staats, and Chon (because the rejection of claim 20 (which ultimately
depends from claims 15 and 18) relies upon the same base combination used
for claim 15, we decide the outcome of claim 20 on the same basis as
representative independent claim 15). 37 C.F.R. § 41.37(c)(l)(iv).
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highlight and amplify certain teachings and suggestions of the references as
follows.
Representative Claim 1
Cleaveland (Abstr., 13) pertains to generating test cases for software
in automobiles or airplanes. Lima (Abstr., p. 1, Section 1,12) pertains to
state based test case generation using permutations for cell phones. And,
Staats (Abstr., p. 2, Section 1,13) relates to automated test generation tools
and methods using modified condition/decision coverage (MC/DC) for
airplanes. Thus, Cleaveland, Lima, and Staats, as well as Appellant’s
invention recited in claim 1, all pertain to methods for test case generation
for software validation.
Appellant’s argument (App. Br. 6—8) that Staats teaches away from
Lima (and vice versa) is unpersuasive. “A reference may be said to teach
away when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant.” In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Appellant’s argument (App.
Br. 6—8) is premised on Staats’ description that reducing the number of test
suites is advantageous, whereas Lima describes a need to reduce test
execution time by reducing the number of tests performed and avoiding
generating permutations. However, we agree with the Examiner (Ans.
18—19) that although “Lima tries to reduce the number of tests that are
performed, Lima does the permutation for the optimization in generating
various test cases for the suite and not just to eliminate the permutation (see
section 2.1)” (Ans. 18).
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Application 11/045,514
Appellant also argues (App. Br. 6) that Lima does not generate a full
test sequence. However, the language in limitation [A] recited in claim 1
merely recites determining and applying “permutations of values,” and does
not require that performing all of the permutations as Appellant argues. In
any event, Lima discloses “P” which is all sets and all permutations (Lima,
p. 2, Section 2, Definition 1), and then discloses “[w]e have to produce all
permutations of test cases” (p. 2, Section 2,14) (emphasis added).
Appellant’s Reply Brief does not convince us otherwise.
Therefore, neither Staats nor Lima teaches away from Appellant’s
invention recited in claim 1.
Appellant’s arguments (App. Br. 6; Reply Br. 4) that Staats fails to
disclose or suggest limitation [B], including determining a MC/DC threshold
level, are unpersuasive. Instead, we agree with the Examiner (Ans. 20) that
Staats teaches or suggests measuring fault finding effectiveness of generated
test suites satisfying certain coverage criteria that is equivalent to
determining a MC/DC threshold level in Sections 1 and 2.
Representative Claim 15
Appellant makes the same arguments for claim 15 as made for claims
1 and 8, with the addition of contending that “Chon does not suggest
MC/DC or determining whether a predetermined level of MC/DC is
reached” and Chon fails to overcome the deficiencies of Lima and Staats
(App. Br. 10). Appellant’s arguments presented as to Chon (see App.
Br. 10; Reply Br. 4—5) are not persuasive inasmuch as the Examiner relies
on a properly made combination of Cleaveland, Lima, Staats, Chon, and
Osborne to support the conclusion of obviousness of the subject matter of
independent claim 15. We note that each reference cited by the Examiner
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Application 11/045,514
must be read, not in isolation, but for what it fairly teaches in combination
with the prior art as a whole. See In re Merck & Co., Inc., 800 F.2d 1091,
1097 (Fed. Cir. 1986) (finding one cannot show non-obviousness by
attacking references individually where the rejections are based on
combinations of references).
Appellant has not rebutted or otherwise shown the Examiner’s
explanation of the combination of the collective teachings and suggestions
of the applied references (see Final Act. 8—12, 16—18; Ans. 8—11, 16—17)
made in response to the Appellant’s arguments in the Appeal Brief
(regarding Chon individually) to be in error. Chon is relied on by the
Examiner as teaching, inter alia, a vehicle computer that communicates data
to a test computer (Ans. 15—16), and not determining a level of MC/DC as
Appellant contends. Furthermore, we agree with the Examiner (Final Act.
11; Ans. 11, 20—21) that Staats (p. 2, Section 1,13; p. 3, Section 2, || 1—3;
pp. 6—7, Section 3.4, || 2—3) teaches determining whether a predetermined
level of MC/DC is reached (see also, e.g., claim 1, limitation [B]).
Appellant’s Reply Brief does not convince us otherwise.
Summary
In view of the foregoing, we sustain the Examiner’s obviousness
rejection of representative independent claim 1, as well as claims 2—10
and 13 grouped therewith. For similar reasons, and because (i) claims 11,
12, 14—18, and 20 each ultimately depend from claims 8 and/or 15, and
therefore, contain all of the salient limitations; and (ii) Appellant argues
claims 11, 12, 14—18, and 20 for the same reasons as claims 8 and 15 (see
App. Br. 10-11), we also sustain the Examiner’s obviousness rejections of
dependent claims 11, 12, 14—18, and 20.
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CONCLUSION
The Examiner did not err in rejecting (i) claims 1—10 and 13 over the
combination of Cleaveland, Lima, and Staats; and (ii) claims 11, 12, 14—18,
and 20 over the same base combination modified by various other
references, because the base combination teaches or suggests the disputed
limitations of a method for state based test case generation for software
validation including determining steps [A] and [B], as recited in
representative independent claims 1 and 15.
DECISION
We affirm the Examiner’s rejections of claims 1—18 and 20 under
35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED
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