Ex Parte McGrath et al

Board of Patent Appeals and Interferences

Dec 13, 2010

10745822 (B.P.A.I. Dec. 13, 2010)

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.
10/745,822 12/23/2003 Frank McGrath CA920030518US1 (004) 2409
46321 7590 12/14/2010
CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487
EXAMINER
DAO, THUY CHAN
ART UNIT PAPER NUMBER
2192
MAIL DATE DELIVERY MODE
12/14/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FRANK MCGRATH, MARK METHENY, KENNETH
SANDLER, and WILLIAM C. TOBIN
____________

Appeal 2009-009784
Application 10/745,822
Technology Center 2100
____________

Before JAMES D. THOMAS, JEAN R. HOMERE,
and ST. JOHN COURTENAY III, Administrative Patent Judges.

COURTENAY III, 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 2009-009784
Application 10/745,822

2
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s non final decision rejecting claims 1-3 and 5-7. Claim 4 has
been cancelled. We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b). We affirm.
Invention
In accordance with an embodiment of Appellants’ invention,
[a] method, system and apparatus for locating a testable object in a
functional testing tool is provided. The system can include a record
process configured to produce both a test script and an object
mapping, and a playback process configured to process the test script.
An object manager can be coupled to the playback process and
configured to locate among candidate testable objects in a GUI, a
candidate testable object having a set of properties which partially
matches another set of properties associated with a corresponding test
object in the object mapping.

(Spec. 16).

Claim 1 is illustrative:
1. A method for locating testable objects in a functional
testing tool, the method comprising the steps of:

comparing object properties for a mapped testable object
to object properties for each of a set of candidate testable
objects organized in a hierarchy;

computing an anchor object in the hierarchy; and,

determining a best matching candidate testable object for
the mapped testable object without requiring an exact match of
the object properties while constraining the comparing and
determining steps with respect to the anchor object.

Appeal 2009-009784
Application 10/745,822

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(emphasis added).

The Examiner relies on the following prior art reference as evidence
of unpatentability:
Stoval US 6,694,509 B1 Feb. 17, 2004
(filed Dec. 28, 1999)

Appellants appeal the following rejection:
Claims 1-3 and 5-7 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Stoval.
ISSUE
Based upon our review of the administrative record, we have
determined that the following issue is dispositive in this appeal:

Under § 102, did the Examiner err in broadly reading the
disputed “testable object” on Stoval’s source code and
header files, within the meaning of representative claim 1?

PRINCIPLES OF LAW
“Anticipation of a patent claim requires a finding that the claim at
issue ‘reads on’ a prior art reference.” Atlas Powder Co. v. IRECO, Inc.,
190 F.3d 1342, 1346 (Fed Cir. 1999) (“In other words, if granting patent
protection on the disputed claim would allow the patentee to exclude the
public from practicing the prior art, then that claim is anticipated, regardless
of whether it also covers subject matter not in the prior art.”) (internal
citations omitted).

Appeal 2009-009784
Application 10/745,822

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GROUPING OF CLAIMS
Based on Appellants’ arguments in the Briefs, we decide the appeal
on the basis of representative claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).

FACTUAL FINDINGS (FF)
We adopt the Examiner’s findings in the Answer and non final Office
Action, with respect to the limitations at issue, as our own. (Ans. 3 et seq.).
We add the following factual finding:

1. Appellants’ Specification discloses:
Significantly, this invention can be embodied in other
specific forms without departing from the spirit or
essential attributes thereof, and accordingly, reference
should be had to the following claims, rather than to the
foregoing specification, as indicating the scope of the
invention.
(Spec. 12-13, para. [0027]).

ANALYSIS
Based upon our review of the record, we find unconvincing
Appellants’ arguments that the Examiner “has failed to meet the burden of
proving a prima facie case of anticipation with respect to Appellants' claims
1 through 3 and 5 through 7 as the entirety of Examiner's analysis is
dependent upon the defective claim construction.” (App. Br. 5). We note
that each argument urging the patentability of the claims before us on appeal
turns upon the claim construction accorded to the term “testable object.”
(Independent claims 1, 5).
Appellants contend that the Examiner has erred by improperly
construing the term “‘testable object’ as used in Appellants’ claims as ‘test
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5
scripts.’” (App. Br. 4). Appellants refer to page 2, paragraph [0004] of the
Specification and state that “the term ‘object’ is clearly defined as ‘GUI
Elements.’” (App. Br. 4). Appellants aver that when the standard required
by the Federal Circuit in Phillips v. AWH Corp. 2 is applied, “a proper claim
construction of ‘testable object’ is a ‘GUI element that is testable.’” (Id.)
At the outset, we note that the Court of Appeals for the Federal Circuit
has determined that the description in the specification can limit the apparent
breadth of a claim in two instances: (1) where the specification reveals a
special definition given to a claim term by the patentee that differs from the
meaning it would otherwise possess; and, (2) where the specification reveals
an intentional disclaimer, or disavowal, of claim scope by the inventor.
Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc)
(citations omitted).
We find the case before us does not present either reason to read a
limitation from the specification into the claims. We note that “GUI
element” is not recited in any claim before us on appeal. While the
Appellants urge that this limitation be read from the Specification into the
claims (App. Br. 4), we observe that Appellants’ Specification expressly
discloses that the scope of the invention is limited only by the claims:
Significantly, this invention can be embodied in other
specific forms without departing from the spirit or
essential attributes thereof, and accordingly, reference
should be had to the following claims, rather than to the
foregoing specification, as indicating the scope of the
invention.
(FF 1) (emphasis added).

2 Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
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Application 10/745,822

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Although Appellants’ Specification at paragraph [0004] describes
GUI elements as objects, we observe that Appellants’ Specification also
provides an exemplary description of a “testable object” as “a test object can
be constructed which can include a reference to a corresponding object 160
in the GUI 150 of the application under test 140.” (Spec. 8, para. [0016]; see
also Fig. 1)(emphasis added). Appellants’ Specification further discloses
that “a test object, in addition to containing a description of a testable object
or a remote, also can contain a reference to an operating system process.”
(Spec. 11, para. [0024]) (emphasis added). Appellants’ Specification also
discloses that a test object can serve as an anchor object: “In this regard, the
use of a test object as an anchor which refers to an operating system process,
can constrain a search for a test object to those found within the referred
process.” (Spec. 11-12, para. [0024]) (emphasis added).
We find these disclosures to be exemplary and insufficient to provide
a person of ordinary skill in the art with clear and precise notice of the
meaning that is to be construed. See also In re Paulsen, 30 F.3d 1475, 1480
(Fed. Cir. 1994) (although an inventor is free to define the specific terms
used to describe the invention, this must be done with reasonable clarity,
deliberateness, and precision; where an inventor chooses to give terms
uncommon meanings, the inventor must set out any uncommon definition in
some manner within the patent disclosure so as to give one of ordinary skill
in the art notice of the change).
In the “Response to Argument” portion of the Answer, the Examiner
broadly construes the disputed term “testable objects”:
"testable objects" here are (1) not necessarily
objects/instances of object-oriented classes under such an
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object-oriented programming language; and (2) do not
exclude such objects/items, as being software
modules/assemblies, source code files, and/or header
files. Accordingly, what so-called "testable object" is
merely just an object or item so long as being under
tested – emphasis added.
(Ans. 5).
Responsive to the Examiner’s arguments, Appellants state that they
agree with the Examiner’s broader construction of a testable object as an
“object that is testable” in the Reply Brief. (Reply Br. 2). However,
Appellants nevertheless maintain that the Examiner’s broad reading of the
claimed “testable object” on Stoval’s source code files and header files
“exceeds the ordinary understood meaning of the term ‘object’ as recognized
by the skilled artisan.” (Reply Br. 3). Appellants proffer an undated
Wikipedia definition of “object” in support. (Reply Br. 3).
Regarding the extrinsic evidence (Wikipedia definition of
“object”) newly presented with the Reply Brief, we have no discretion
to consider the new evidence and associated new arguments. See
37 C.F.R. § 41.33(d)(2):
(2) All other affidavits or other evidence filed after the date of
filing an appeal pursuant to §41.31(a)(1) through (a)(3) will not
be admitted except as permitted by §§41.39(b)(1),
41.50(a)(2)(i) and 41.50(b)(1).

(37 C.F.R. ¶ 41.33(d)(2)).
Moreover, we are concerned with the metes and bounds of the claim
term “testable objects” and not “objects” per se. On this record, we do not
agree with Appellants that the Examiner’s broader construction is
inconsistent with Appellants’ Specification given that the Specification
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expressly discloses that the scope of the invention is limited only by the
claims. (Spec. 12-13, para. [0027]).
We conclude that a broad but reasonable interpretation of
representative claim 1 places no limitation on the specific object properties
of a “testable object.”3 Therefore, we conclude that nothing in the language
of claim 1 precludes the Examiner’s broader claim interpretation,
particularly in light of the express guidance in Appellants’ Specification that
“reference should be had to the following claims, rather than to the
foregoing specification, as indicating the scope of the invention.” (Spec. 12-
13, para. [0027]).
While this broader construction may not comport with Appellants’
argued claim scope, we note that “[a]nticipation of a patent claim requires a
finding that the claim at issue ‘reads on’ a prior art reference.” Atlas Powder
Co., 190 F.3d at 1346. Appellants could have amended their claims during
prosecution to clarify the meaning and intended scope of the disputed claim
term “testable object.” However, Appellants chose not to do so. Because
“applicants may amend claims to narrow their scope, a broad construction
during prosecution creates no unfairness to the applicant or patentee.” In re
ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citing
In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)).

3 Our reviewing court has repeatedly warned against confining the claims to
specific embodiments described in the specification. Phillips v. AWH Corp.,
415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc).
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CONCLUSION
On this record, we find no reversible error in the Examiner’s finding
of anticipation. Therefore, we sustain the Examiner’s anticipation rejection
of representative claim 1, and of claims 2, 3, and 5-7 (not argued separately),
which fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii).

DECISION
We affirm the Examiner’s § 102 rejection of claims 1-3 and 5-7.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

ORDER
AFFIRMED

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CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487