Ex Parte Li et al

Patent Trials and Appeals Board

Jan 9, 2015

11777340 - (D) (P.T.A.B. Jan. 9, 2015)

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.
11/777,340 07/13/2007 Zhong Jie Li YOR920070229US1 8398
48062 7590 01/12/2015
RYAN, MASON & LEWIS, LLP
1175 Post Road East
2nd Floor
Westport, CT 06880
EXAMINER
VO, TED T
ART UNIT PAPER NUMBER
2191
MAIL DATE DELIVERY MODE
01/12/2015 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 ZHONG JIE LI, HE HUI LIU,
NAOMI M. MITSUMORI, KRISHNA RATAKONDA,
HUA FANG TAN, and JUN ZHU1
____________________

Appeal 2012-007809
Application 11/777,340
Technology Center 2100
____________________

Before JOHNNY A. KUMAR, MICHAEL J. STRAUSS, and
NATHAN A. ENGELS, Administrative Patent Judges.

ENGELS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 3, 7, 9–11, 13, and 16–20. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm-in-part.

1Appellants state that International Business Machines Corporation is the
real party in interest. App. Br. 1.
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Application 11/777,340
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STATEMENT OF CASE
The claimed invention is directed to a method for analyzing testing
coverage of software modules to provide process coverage statistics. Claim
1, reproduced below, is exemplary of the claimed subject matter:
1. A method for analyzing testing coverage of one or more
software modules to provide process coverage statistics,
comprising the steps of:

obtaining one or more coverage measures from a test
specification document;

performing a trace on each of the one or more coverage
measures during a test;

analyzing each trace to create an initial run-time service
choreography model for a process that utilizes one or more of
said software modules, wherein the model includes each of one
or more service choreography patterns occurring in the process;
and

using the model to provide statistical data on test coverage
according to a process, wherein one or more steps of said
method are performed by a hardware device.

Dismissal of Claims 2, 4-6, 8, 12, 14, and 15
Claims 1–20 are currently pending and finally rejected, but Appellants
only appeal the Examiner’s rejection of claims 1, 3, 7, 9–11, 13, and 16–20.2

2Appellants’ Notice of Appeal failed to identify any specific claims from
which the appeal was taken, but Appellants identify claims 1, 3, 7, 9-11, 13,
16–20 as those subject to this Appeal. App. Br. 2 (“Claims 1, 3, 7, 9-11, 13,
16-19, and 20 are being appealed.”). Although the “Grounds of Rejection to
be Reviewed on Appeal” section of the Appeal Brief lists all claims subject
to their respective rejection, including claims 2, 4-6, 8, 12, 14, and 15 (App.
Br. 5), Appellants omit these claims from the listing of claims “being
appealed” (App. Br. 2), from the Claims Appendix, and from the Arguments
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Application 11/777,340
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Accordingly, we lack jurisdiction over claims 2, 4–6, 8, 12, 14, and 15 and
the Examiner is advised to cancel those claims consistent with § 1215.03 of
the Manual of Patent Examining Procedure. See Ex Parte Ghuman, 88
USPQ2d 1478, 1480 (BPAI 2008) (precedential). To the extent it may be
found that claims 2, 4–6, 8, 12, 14, and 15 are before us, we summarily
affirm the Examiner’s rejections of those claims for lack of separate
argument for patentability. See App. Br. 2, 5–11; see also 37 C.F.R. §
41.37(c)(1)(viii) (2011); Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI
2010) (precedential).

Rejections on Appeal3
1. Claims 1, 3, 7, 9–11, 13, and 16–20 stand rejected under 35 U.S.C. §
112, second paragraph, as indefinite.4
2. Claims 1, 3, 7, 9–11, 13, and 16–20 stand rejected under 35 U.S.C.
§ 103(a) as obvious in view of Khan (Ghulam Mustafa Khan, Test Coverage
Analysis: A Method for Generic Reporting, Indian Institute of Technology,
Kanpur, (April 2000)); Barros (Alistair Barros et al., A Critical Overview of
the Web Services Choreography Description Language (WS-CDL)

section of Appellants’ Appeal Brief. App. Br. 5-11. Accordingly, we find
that Appellants have demonstrated a clear intent not to pursue an appeal of
claims 2, 4–6, 8, 12, 14, and 15.
3Should there be further prosecution of this application (including any
review for allowance), the Examiner may wish to review the claims for
compliance under 35 U.S.C. § 101 in light of the recently issued preliminary
examination instructions on patent eligible subject matter. See “Preliminary
Examination Instructions in view of the Supreme Court Decision in Alice
Corporation Pty. Ltd. v. CLS Bank International, et al.,” Memorandum to
the Examining Corps, June 25, 2014.
4 Although claims 1-20 are included within the rejection under 35 U.S.C. §
112, second paragraph, only claims 1, 3, 7, 9–11, 13, and 16–20 are
appealed.
Appeal 2012-007809
Application 11/777,340
4
www.BPTrends.com (2005); and Kappel (Web Engineering - The Discipline
of Systematic Development of Web Applications, John Wiley & Sons, Ltd.
(Greti Kappel et al. eds. 2006) (2003). Ans. 6.

Appellants’ Contentions
1. Appellants argue that the Examiner erred in rejecting claims 1, 3, 7,
9–11, 13, and 16–20 under 35 U.S.C. § 112, second paragraph, as indefinite.
App. Br. 6.
a) Appellants argue that proposed amendments to claims 1, 3, 7, 9, 10,
and 19 overcome the Examiner’s finding that those claims are indefinite
because of the limitation “wherein one or more steps of said method are
performed by a hardware device.” App. Br. 6.
b). Appellants argue that the claim term “initial” in claims 1, 3, 7, 9–
11, 13, and 16–20 does not render the claims indefinite. App. Br. 6.
2. Appellants argue that the Examiner erred in finding that Khan teaches
or suggests analyzing a trace to create an initial model, as required by claim
1, 11, 19, and 20. App. Br. 7–8. Specifically, Appellants argue that “using
the Examiner’s interpretation of Khan, Khan already has an initial model
based on the software modules prior to any trance analysis.” Id. (italics and
underline omitted).
3. For each of claims 3, 7, 9, 10, 13, 16–18, and 20, Appellants’ Appeal
Brief cites the Examiner’s rejection, quotes the claim language, and states
that the claim language is not taught by the cited reference. See App. Br. 9–
11. Appellants’ Reply Brief addresses the substance of the Examiner’s
rejection of each claim. See Reply Br. 5–10.

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ANALYSIS
1. Are the claims at issue indefinite?
During examination, a claim is indefinite if the metes and bounds of
the claimed invention are not clear. Supplementary Examination Guidelines
for Determining Compliance with 35 U.S.C. 112 and for Treatment of
Related Issues in Patent Applications, 76 Fed. Reg. 7162, 7164 (Feb. 9,
2011). The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted).
a) “Wherein one or more steps of said method are performed by a
hardware device”
The Examiner rejected claims 1, 3, 7, 9, 10, and 19 as indefinite,
concluding that the limitation “wherein one or more steps of said method are
performed by a hardware device” makes it unknown who or what is
performing which steps. Final Office Action at 6–7. Appellants argue that
amendments to those claims contained in an Amendment After Final that
Appellants filed on July 25, 2011 overcome those rejections. App. Br. 6;
Reply Br. 11.
As stated in the Examiner’s August 12, 2011 Advisory Action, the
Examiner did not enter those amendments because the amendments would
have improperly raised new issues without a request for continued
examination. See Advisory Action, August 12, 2011 (citing 37 C.F.R. §
1.116 and 41.33(a)). Because the proposed amendments were not entered
and are not currently pending, Appellants’ arguments regarding the proposed
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amendments are not commensurate in scope with the claims as pending and
are therefore unpersuasive.5
b) “Create an initial run-time service choreography model”
As an additional basis for the rejection of claims 1, 3, 7, 9–11, 13, and
16–20 as indefinite, the Examiner concludes that the limitation “create an
initial run-time service choreography model” is unclear in light of the
specification. Final Office Action at 6–7; Ans. 5. Appellants argue that a
person of ordinary skill in the art would understand that the claimed step of
creating a run-time service choreography model generated from a trace is
inherently the “initial” run-time service choreography model. App. Br. 6;
Reply Br. 2–3. We agree with the Appellants and conclude that the
limitation “create an initial run-time service choreography model” does not,
when read in light of the Specification, render the claims indefinite.
Based on the foregoing, we sustain the Examiner’s rejection of claims
1, 3, 7, 9, 10, and 19 under 35 U.S.C. § 112, second paragraph, but we do
not sustain the Examiner’s rejection of claims 11, 13, 16–18, and 20 under
35 U.S.C. § 112, second paragraph.

2. Does Khan teach or suggest analyzing each trace to create an initial
model for a process?
The Examiner finds that Khan teaches the limitation “analyzing each
trace to create an initial . . . model for a process” with its disclosure of “test
coverage analyzers,” report generators that “constructs a flow graph for each
trace,” and similar disclosures. Ans. 7–8 and 15–16 (citing Khan 7, 14, 22,

5We note that the Claims Appendix included with Appellants’ Appeal Brief
incorrectly lists the claims as proposed in the July 25, 2011 Amendment
After Final. Those claims are not pending and therefore are not considered
on this Appeal.
Appeal 2012-007809
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28, and 30). As one example, Khan’s Figure 3.1 depicts analyzing block
trace information with a Control Structure Representation (“CSR”)
Processor, which “generates [a] control flow graph of the test program while
parsing [a] CSR file.” Khan 23.
Appellants argue that Khan does not teach or suggest this limitation
because, “using the Examiner’s interpretation of Khan,” Khan already has a
model when it performs a trace analysis. App. Br. 7–8. Appellants also
argue that, because Khan teaches creating a model prior to any trace
analysis, Khan teaches away from the claimed invention. App. Br. 8.
We find Appellants’ arguments unpersuasive, and we agree with the
Examiner that Khan teaches or suggests analyzing trace information to
create an initial model as required by claims 1, 11, 19, and 20. See Khan
18–19, 22–25, and 30. As noted above, Khan teaches a “report generator”
that constructs a flow graph for each execution trace, and “[f]or each test
execution, the report generator takes the blocks as nodes and link[s] them as
they are encountered (in block trace) as an adjacency matrix.” Khan 30.
Appellants’ Specification does not provide a definition for the disputed
claim term “initial model,” and, under a broad but reasonable interpretation
of the disputed limitation, we agree with the Examiner that Khan’s test
coverage analyzer and report generators that construct a flow graph for each
test teaches the claimed limitation “analyzing each trace to create an initial .
. . model for a process.” See Ans. 7–8 and 15–16 (citing Khan 7, 14, 22, 28,
and 30). Accordingly, we sustain the Examiner’s rejection of claims 1, 11,
19, and 20.

Appeal 2012-007809
Application 11/777,340
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3. Appellants’ failure to substantively address claims 3, 7, 9, 10, 13, and
16–18.
Regarding claims 3, 7, 9, 10, 13, and 16–18, Appellants’ Appeal Brief
merely cites the Examiner’s finding, quotes the claim language, and then
states in conclusory terms that the claim language is not met by the cited
reference. See App. Br. 9–11. These statements do not point out with
particularity the Examiner’s purported error nor explain why the limitations
of claims 3, 7, 9, 10, 13, and 16–18are patentable in view of the prior art.
As Appellants’ Appeal Brief does not include specific arguments or
evidence as to why claims 3, 7, 9, 10, 13, and 16–18 are patentable over the
cited prior art, we find Appellants arguments unpersuasive. See In re Lovin,
652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.”); 37 C.F.R. §
41.37(c)(1)(viii) (2011). To the extent that Appellants raise additional
arguments directed to these claims for the first time in Appellants’ Reply,
having failed to present the arguments in their Appeal Brief, Appellants have
waived the arguments. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI
2010) (informative) (“[T]he reply brief [is not] an opportunity to make
arguments that could have been made in the principal brief on appeal to
rebut the Examiner’s rejections, but were not.”). Accordingly, we sustain
the Examiner’s rejection of claims 3, 7, 9, 10, 13, and 16–18.

DECISION
For the foregoing reasons, we sustain the Examiner’s rejection of
claims 1, 3, 7, 9, 10, and 19 under 35 U.S.C. § 112, second paragraph, but
Appeal 2012-007809
Application 11/777,340
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we reverse the Examiner’s rejection of claims 11, 13, 16–18, and 20 under
35 U.S.C. § 112, second paragraph. We sustain the Examiner’s rejection of
claims 1, 3, 7, 9–11, 13, and 16–20 under 35 U.S.C. § 103(a) as obvious in
view of Khan, Barros, and Kappel.
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) (2009).

AFFIRMED IN PART

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