Ex Parte Fu

Board of Patent Appeals and Interferences

Mar 9, 2011

10721708 (B.P.A.I. Mar. 9, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JENNIFER FU
____________________

Appeal 2009-005390
Application 10/721,708
Technology Center 2100
____________________

Before: JOSEPH L. DIXON, JEAN R. HOMERE, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-005390
Application 10/721,708
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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
21. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The claims are directed to black box testing in multi-tier application
environments. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A method of black box testing in a multi-tier application
environment comprising:
dividing a multi-tier application into a plurality of tier-
specific modules;
testing each of said plurality of tier-specific modules as a
black box; and
observing an output of one of said plurality of tier-
specific modules.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Bocarsly et al. "End-to-End Testing of IT Architecture and Applications",
The Rational Edge, June 2006.

REJECTIONS
Claims 1-4, 6-14, and 16-21 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Bocarsly. Ans. 3.
Claims 5 and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bocarsly. Ans. 3.

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ISSUES
Has the Examiner shown Bocarsly anticipates independent claim 1”?
Specifically, does Bocarsly disclose "testing each of said plurality of tier-
specific modules as a black box"?

PRINCIPLES OF LAW
35 U.S.C. § 102
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987). Analysis of whether a claim is patentable over the
prior art under 35 U.S.C. § 102 begins with a determination of the scope of
the claim. We determine the scope of the claims in patent applications not
solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction in light of the specification as it would be
interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The properly interpreted claim
must then be compared with the prior art.
35 U.S.C. § 103
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[T]he Examiner bears
the initial burden, on review of the prior art or on any other ground, of
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Application 10/721,708
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presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). Furthermore, “‘there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness’ . . . [H]owever, the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007)(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).
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).

ANALYSIS
Appellant contends that the Examiner has mischaracterized the
teachings of the Bocarsly reference and its comparison to Appellant's
invention wherein the Bocarsly reference does not teach the claimed "testing
each of said plurality of tier-specific modules as a black box." "Appellant
understands Bocarsly to teach a testing approach utilizing only portions of
both the typical black box and white box testing methods." (App. Br. 8).
The Examiner maintains that "the claims do not make mention of the
weaknesses involved in black box or any other testing method; accordingly,
Bocarsly's recognition of them does not represent a patentable distinction
from the claims.” (Answer 8). We agree with the Examiner, and we find
that Appellant’s argument essentially admits that both black and white box
testing are present in Bocarsly. Therefore, the mere fact that white box
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testing is additionally performed does not negate the fact that each module is
also treated as a black box for testing in addition to being treated as a white
box for other additional testing to complement each other.

The Examiner maintains that:

the claims do not require performing "black box" testing to the
exclusion of all other testing methods. In fact the penultimate
paragraph on pg. 13 of the specification states the appellant's methods
are "complimentary and compatible with conventional computer
system testing systems and processes". Accordingly, Bocarsly's use
of "white box" testing does not diminish his use of the claimed "black
box" testing (i.e. both are used).

(Answer 8-9). We agree with the Examiner's claim interpretation.
Additionally, we find various teachings within Bocarsly which clearly
indicate that both black box testing and white box testing are performed in
the End-to-End Architecture Testing of multi-tier architecture. For example,
Bocarsly teaches "these parallel modes of analysis aid in determining the
strengths and weaknesses of the architecture[.]" (Bocarsly at page 2)
(emphasis added). "End-to-End Architecture Testing Includes Functional
and Performance Testing at All Points of Access." (Bocarsly at page 3)
(emphasis added). "The individual functional and performance tests
required for End-to-End Architecture Testing are conducted." (Bocarsly at
page 4) (emphasis added). "[S]imultaneously tests functionality and
performance." (Bocarsly at page 4) (emphasis added). "In parallel to these
functional tests, scalability testing at this level exercises each component
within the environment to determine its transaction (or volume) limitations."
(Bocarsly at page 5) (emphasis added). "[B]oth functional and
scalability/load testing are performed on the assembled system." (Bocarsly
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at page 9) (emphasis added). These teachings of Bocarsly clearly evidence
that the modules of the tiered architecture are tested "as a black box," as
recited in independent claim 1. Therefore, we find Appellant’s arguments to
be unpersuasive of error in the Examiner's showing of anticipation of
independent claim 1. Since Appellant has not set forth separate arguments
for patentability of independent claims 11 and 21, we will sustain the
rejections thereof along with there associated dependent claims of claims 1,
11, and 21. Appellants argue the patentability of the claims on appeal as a
single group by arguing the rejection of claim 1. In accordance with 37
C.F.R. § 41.37(c)(1)(vii), we consider the claims on appeal as standing or
falling with representative claim 1.
35 U.S.C. § 103
Dependent claims 5 and 15 rely upon the arguments advanced with
respect to independent claim 1, which we did not find persuasive. (App. Br.
9). Appellant additionally contends that Bocarsly "teaches away from
Appellant’s invention" because Bocarsly teaches the addition of a white box
testing. (Id. 9-10). Appellant contends that Bocarsly specifically points out
perceived "flaws" of black box testing. (Id. 10). We disagree with
Appellant’s contention and find that Bocarsly merely teaches a combination
of testing methodologies which "eliminates the weaknesses inherent in each,
while capitalizing on their respective advantages." Appellant argues that
their invention "uses only black box testing techniques." (Id. 10). We find
Appellant’s argument to be unpersuasive since it is incommensurate in scope
with the express claim language. Therefore, we will sustain the rejection
claims 5 and 15.

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CONCLUSIONS OF LAW
The Examiner did not err in rejecting:
claims 1-4, 6-14, and 16-21 under 35 U.S.C. § 102(b) as being
anticipated by Bocarsly; and
claims 5 and 15 under 35 U.S.C. § 103(a) as being unpatentable over
Bocarsly.

DECISION
For the above reasons, the Examiner’s rejection of claims 1-21 is
affirmed.

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).

AFFIRMED

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