Ex Parte FuDownload PDFBoard of Patent Appeals and InterferencesMar 9, 201110721708 (B.P.A.I. Mar. 9, 2011) Copy Citation 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 2 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. Appeal 2009-005390 Application 10/721,708 3 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 Appeal 2009-005390 Application 10/721,708 4 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 Appeal 2009-005390 Application 10/721,708 5 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 Appeal 2009-005390 Application 10/721,708 6 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. Appeal 2009-005390 Application 10/721,708 7 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 tkl HEWLETT-PACKARD COMPANY Intellectual Property Administration 3404 E. Harmony Road Mail Stop 35 FORT COLLINS, CO 80528 Copy with citationCopy as parenthetical citation