Ex Parte Fishaimer

Patent Trial and Appeal Board

Nov 9, 2016

13692228 (P.T.A.B. Nov. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/692,228 12/03/2012
107313 7590
Stevens & Showalter, LLP
Box CAT
7019 Corporate Way
Dayton, OH 45459-4238
11/14/2016
FIRST NAMED INVENTOR
Tomer Fishaimer
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
20121146US1/CAT003 PA 1172
EXAMINER
DUNCAN, MARC M
ART UNIT PAPER NUMBER
2113
NOTIFICATION DATE DELIVERY MODE
11/14/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
PTO@sspatlaw.com
ssllp@speakeasy.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOMER FISHAIMER
Appeal2015-007448
Application 13/692,228
Technology Center 2100
Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and
DENISE M. POTHIER, Administrative Patent Judges.
BAUMEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
rejections of claims 1-8, 12-19, and 23-30. See Ans. 2 (withdrawing the
rejection of claims 9-11, 20-22, and 31-33).
We reverse.
Appeal2015-007448
Application 13/692,228
STATEMENT OF THE CASE
Claims 1-8, 12-19, and 23-30 1 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by N andigama (US 2004/001597 5 A 1; published
Jan. 22, 2004). Ans. 2---6. 2
We have jurisdiction under 35 U.S.C. § 6(b). We review the appealed
rejections for error based upon the issues identified by Appellant, and in
light of the arguments and evidence produced thereon. Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
SUMMARY OF THE INVENTION
Appellant's invention is a system and method for testing application
code. Spec. i-f 22. One embodiment associates a test agent with an
application server. Id. In Appellant's invention, a client does not need to
know how to communicate directly with this application server to test the
code. Id. i-f 25. For exampie, a quaiity-assurance engineer can use the
server's test agent to interact with testable code through a web browser
associated with a client. See id. i-fi-122, 25. The test agent discovers portions
of each software component that can be tested. Id. i-f 25. The client's user
interface then presents this information. Id. i-f 26. As part of its operation,
the client sends requests and receives information through a remote test
orchestrator, instead of to the application servers directly. Id. i-f 25.
1 Claim 3 0 recites "The computer program product m ... " (emphasis added).
But the claims do not provide an antecedent basis for a "product m." We
leave this issue to the Examiner.
2 Throughout this opinion, we refer to (1) the Appeal Brief filed March 12,
2015 ("App. Br."); (2) the Examiner's Answer mailed June 11, 2015
("Ans."); and (3) the Reply Brief filed August 10, 2015 ("Reply Br.").
2
Appeal2015-007448
Application 13/692,228
Independent claim 1, reproduced below with our emphasis, is
illustrative:
1. A method for testing testable code of an application
compnsmg:
sending a request, from a computer-implemented client to
a remote test orchestrator, for a list identifying any test agents
registered with the remote test orchestrator, said any test agents
each configured to provide access to respective associated
testable code and said remote test orchestrator configured to
provide the computer-implemented client with access to said any
test agents; and
receiving, by the computer-implemented client from the
remote test orchestrator, the list identifying said any test agents
registered with the remote test orchestrator.
CONTENTIONS
Appellant contends that Nandigama does not anticipate claim 1
because 1'-Jandigama does not send or receive the recited list of registered test
agents. App. Br. 10-12; Reply Br. 4--5. According to Appellant,
Nandigama's user does not request or know the identity of any test
computer. App. Br. 11. So in Appellant's view, Nandigama's user does not
need to have the recited list because the system controller-not the user-
selects the test computer. Id. at 11.
Despite finding that Nandigama anticipates claim 1 (Ans. 3), the
Examiner acknowledges that Nandigama does not disclose explicitly
"limitations identical to the claim." Id. at 7. Instead, the Examiner finds
that Nandigama's Distributed Processing Framework (DPF) chooses an
agent based on user-submitted parameters, which is said to be "functionally
equivalent" to choosing the agent directly from a list. Id. at 9. Restated,
3
Appeal2015-007448
Application 13/692,228
claim 1, in the Examiner's view, recites manually performing what
Nandigama does automatically. Id. at 10.
ANALYSIS
We do not sustain the Examiner's anticipation rejection of claim 1.
We are persuaded by Appellant's position that N andigama does not send or
receive the recited list of registered test agents. See App. Br. 10-12;
Reply Br. 4--5.
The Examiner's rejection relies upon Nandigama's embodiment
where a distributed test framework (DTP) chooses a test agent. See
Ans. 8-9 (discussing submitting requirements to the DPF 3); see also Ans. 3
(citing Nandigama i-f 40). For example, Nandigama's test systems-i.e., the
systems that run the software tests---contain agents. Nandigama i-fi-139, 40.
These agents register the corresponding test system's characteristics with a
iook-up service. Id. if 40. To fuifiH a specific test execution request, the
DTP finds the appropriate test system based on user-submitted requirements.
Id. i-f 41. Notably, these requirements do not identify the agents. See id.
Rather, Nandigama matches the user-submitted requirements to the
registered characteristics-i.e., platform, operating system, and other
software and hardware characteristics. See id. i-f 35 (describing registered
characteristics); id. Fig. 4C (showing the selectable requirements). That is,
the user and system exchange these characteristics, not a list of agents. See
id. i-fi-135, 41, Fig. 4C.
3 Nandigama discloses that the DPF can be a DTP (Nandigama i-f 25), which
is the embodiment cited by the Examiner. See Nandigama i-f 35.
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Appeal2015-007448
Application 13/692,228
In fact, the Examiner acknowledges that exchanging characteristics is
not the same as choosing from a list of agents. See Ans. 9 (stating that
submitting requirements is "not explicitly the same" as choosing from a list).
Although the end result may be the same-i.e., some agent is selected-
claim 1 is anticipated only if the act of sending and receiving the recited list
is found, either expressly or inherently described, in Nandigama. See In re
Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). Because Nandigama does
not describe these features, we are persuaded that the Examiner erred in
rejecting claim 1 as anticipated by Nandigama.
Because an obviousness rejection is not before us, we will not
speculate whether it would have been obvious to arrive at the claimed
invention by manually performing Nandigama's automatic process or by
combining that process with embodiments described in the background
section (Nandigama i-fi-16-7, cited in Ans. 9--10). Nor will we speculate
whether modifying Nandigama in this way wouid address every eiement of
claim 1, including the remote test orchestrator.
Accordingly, we do not sustain the rejections of (1) independent
claim 1; (2) independent claims 12 and 23, which also require sending and
receiving a list identifying test agents; or for similar reasons, (3) dependent
claims 2-8, 13-19, and 24--30.
DECISION
The Examiner's decision rejecting claims 1-8, 12-19, and 23-30 is
reversed.
REVERSED
5