Ex Parte Murthy

Patent Trial and Appeal Board

Mar 18, 2015

12415934 (P.T.A.B. Mar. 18, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PRAVEEN K. MURTHY
____________

Appeal 2012-011942
Application 12/415,934
Technology Center 2100
____________

Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–15, 17–32, and 34, which are all the claims pending in
the application. Claims 16 and 33 were cancelled. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
Invention
The claimed method is directed to generating a second modeling
language representation of the system under test based on a first graphical
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modeling language representation of the system under test. (Abstract and
claim 1).
Representative Claim
Independent claim 1 is representative of the rejected claims on appeal:
1. A method comprising:

[a] using one or more computer systems, accessing a first
graphical modeling language representation of a system under
test, the first graphical modeling language representation
comprising one or more behavioral diagrams, one or more of
the behavioral diagrams comprising one or more first
conditional constructs;

[b] using the computer systems, generating based on the
first representation a second modeling language representation
of the system under test, the second graphical modeling
language representation comprising one or more Message
Sequence Charts (MSCs), [b1] one or more of the MSCs
comprising one or more second conditional constructs that are
mathematically equivalent to one or more of the first
conditional constructs; and

[c] using the computer systems, communicating the
second graphical modeling language representation for
generating one or more use scenarios based on the second
graphical modeling language representation.
(Steps lettered and contested limitations emphasized).
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References Cited as Evidence in support of the rejection
1. Lian et al. “Simulation-based analysis of UML statechart diagrams:
methods and case studies”, Software Quality Journal 16 (published
online 17 May 2007), pp. 45–78 (hereinafter “Lian”).
2. “Unified Modeling Language: SuperStructure”, published by Object
Management Group (04 July 2005), pp. 1–710 (hereinafter “USM2.0”
– adopting the nomenclature used by the Examiner, Ans. 4).
3. Murthy, Praveen K., et al. “High Level Hardware Validation Using
Hierarchical Message Sequence Charts”, Proceedings of the High-
Level Design Validation and Test Workshop, 2004, (10 November
2004), pp. 167–172 (hereinafter “Murthy 2004”).
4. Murthy, Praveen, “High level systems validation using hierarchical
message sequence charts”, abstract corresponding to “Colloquium
Center for Embedded Computer Systems” by Dr. Praveen Murthy,
published by University of California, Irvine, (on or before 26 April
2007), pg. 1 (hereinafter “Murthy 2007”).
Rejection
Claims 1–15, 17–32, and 34 stand rejected under 35 U.S.C. § 103(a)
as being obvious over the combined teachings and suggestions of Lian,
USM2.0, Murthy (2007), and Murthy (2004).
Grouping of Claims
Based on Appellant’s arguments, we decide the appeal on the basis of
representative claim 1. See 37 C.F.R. § 41.37(c)(1)(vii)(2004).
1

1
Appellant filed a Notice of Appeal on January 20, 2012. The date of filing
the Notice of Appeal determines which set of rules applies to an Ex parte
appeal. If a Notice of Appeal is filed prior to January 23, 2012, then the
2004 version of the Board Rules last published in the 2011 edition of Title
37 of the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to
the appeal. See also Manual of Patent Examining Procedure (MPEP) 8
th

ed., Rev. 8, July 2010.
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ANALYSIS
We have considered all of Appellant’s arguments and any evidence
presented. We disagree with Appellant’s arguments and we adopt as our
own: (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Answer in response to Appellant’s arguments. (Ans. 16–23). However,
we highlight and address specific findings and arguments (Appellant’s
contentions 1–3) for emphasis in our analysis below:
Appellant contests limitations: [b], and particularly [b1], of claim 1:
(emphasis added)
[b] using the computer systems, generating based on the
first representation a second modeling language representation
of the system under test, the second graphical modeling
language representation comprising one or more Message
Sequence Charts (MSCs), [b1] one or more of the MSCs
comprising one or more second conditional constructs that are
mathematically equivalent to one or more of the first
conditional constructs; and

The differences between Appellant’s position and the Examiner’s
findings are clearly articulated in the Reply Brief:
Even for the sake of the argument and the Appellant does not
admit to that USM2.0 discloses conditional constructs, USM2.0
does not disclose or suggest first conditional constructs or
second conditional constructs, as independent Claim 1 recites.
USM2.0 does not disclose or suggest generating based on the
first representation a second modeling language representation
of the system under test, the second graphical modeling
language representation comprising one or more Message
Sequence Charts (MSCs), one or more of the MSCs comprising
one or more second conditional constructs that are
mathematically equivalent to one or more of the first
conditional constructs, as independent Claim 1 recites.
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(Reply Br. 4, emphasis omitted).
As noted by the Examiner (Ans. 18–19), the Murthy 2004 and Murthy
2007 references represent the inventor’s own work, with both references
being published or made available to the public more than a year before the
March 31, 2009 effective filing date of this application on appeal.
Regarding the contested “conditional constructs” of claim 1, we note
dependent claim 6 further defines the “conditional constructs” of claim 1 as
“each compris[ing] one or more guard constructs or one or more loop
constructs.” We observe the cited USM2.0 reference expressly describes
guard and loop constructs on pages 456–457. Therefore, we find at least
USM2.0 teaches or suggests the contested “conditional constructs” within
the broader scope of independent claim 1.
Regarding the contested Message Sequence Charts (MSCs) of
claim 1, we note dependent claim 13 further limits the MSCs to be
“hierarchically arranged MSCs.” We observe Murthy 2007 expressly
describes a presentation on “High level systems validation using hierarchical
message sequence charts” by the named inventor of this application on
appeal (“Dr. Praveen Murthy”). Therefore, we find at least Murthy 2007
describes the contested MSCs within the broader scope of claim 1, as does
the cited Murthy 2004 reference, entitled: “HIGH LEVEL HARDWARE
VALIDATION USING HIERARCHICAL MESSAGE SEQUENCE
CHARTS.”
Regarding the recited “behavior diagrams” of claim 1, we observe
Murthy 2007 expressly describes:
Dr. Murthy will discuss ongoing work at Fujitsu labs where the
researchers have been using hierarchical message sequence
charts (a more expressive model of computation that subsumes
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many UML 2.0 behavioral diagrams such as sequence,
interaction, and state charts) to specify reactive protocols and
generating test suits automatically.

(Abstract, emphasis added).
In considering the close evidence provided by the Examiner, we note
“‘[a] prima facie case of obviousness is established when the teachings from
the prior art itself would appear to have suggested the claimed subject matter
to a person of ordinary skill in the art.’” In re Bell, 991 F.2d 781, 783 (Fed.
Cir. 1993) (quoting In re Rinehart, 531 F.2d 1048, 1051 (CCPA 1976)).
The Supreme Court further guides: “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007). “If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability.” Id. at 417.
This reasoning is applicable here. We find Appellant’s contentions
regarding limitations [b] and [b1] are grounded on an erroneous premise
which presumes a plurality of prior art elements is unobvious over a single
prior art element of essentially the same type. Specifically, regarding
claim 1 limitation [b1], Appellant contends a second conditional construct
that is recited as being mathematically equivalent to a first claimed
conditional construct is not taught by the cited combination of references,
and thus presume the claimed second conditional construct is unobvious
over the cited prior art. (See App. Br. 13; Reply Br. 3; see also claim 1
limitation [b1]).
We conclude claiming a mere plurality of prior art elements (i.e., a
second modeling language representation based on the first representation
including associated conditional constructs) is not an unobvious distinction
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over the prior art of record, absent some showing of secondary
considerations, such as unexpected results.
Without evidence of secondary considerations in the record, we find
the duplication of known prior art features cited by the Examiner (Ans. 4–
23) would generate a predictable result. Therefore, we conclude Appellant’s
contested claim features would have been obvious over the prior art of
record. See KSR, 550 U.S. at 416–17. Cf. “A mere duplication of parts is
not invention.” In re Marcum, 47 F.2d 377, 378 (CCPA 1931) (citing
Topliff v. Topliff, 145 U.S. 156, 163 (1892)). “It is well settled that the mere
duplication of parts has no patentable significance unless a new and
unexpected result is produced.” In re Harza, 274 F.2d 669, 671 (CCPA
1960).
Thus, even if, arguendo, the Examiner’s proffered combination of
references does not expressly teach contested limitation [b1]: “one or more
of the MSCs comprising one or more second conditional constructs that
are mathematically equivalent to one or more of the first conditional
constructs,” as urged by Appellant (App. Br. 13; Reply Br. 3), on this
record, we are not persuaded of error regarding the Examiner’s ultimate
legal conclusion of obviousness regarding contested limitations [b] and [b1].
(Emphasis and underline added). Accordingly, we sustain the § 103
rejection of representative independent claim 1, and of the grouped claims
which fall therewith. See Claim Grouping, supra.
2

2
In the event of further prosecution of this application, we leave it to
the Examiner to review all the claims for compliance under 35 U.S.C. § 101

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DECISION
We affirm the Examiner’s decision rejecting claims 1–15, 17–32, and
34 under § 103. No time period for taking any subsequent action in
connection with this appeal may be extended under 37 C.F.R. § 1.136(a).
See 37 C.F.R. § 41.50(f).
AFFIRMED

cdc

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.
Further, it appears the “computer-readable tangible storage media” of
independent claim 18, and the claims depending therefrom, may not be
directed to statutory subject matter under § 101 for an additional reason.
Under our jurisprudence, the scope of the recited “computer-readable
tangible storage media” appears to encompass transitory media such as
signals or carrier waves. See Ex parte Mewherter, 107 USPQ2d 1857
(PTAB 2013) (precedential) (holding recited machine-readable storage
medium ineligible under § 101 since it encompasses transitory media).
Here, the recited “computer-readable tangible storage media” (claims
18–32 and 34) is not claimed as non-transitory, and the originally-filed
Specification (e.g., see ¶ 44) does not expressly and unambiguously disclaim
transitory forms, such as signals, via a definition or disclaimer. Therefore,
the “computer-readable tangible storage media” of independent claim 18,
and the claims depending therefrom, is not limited to non-transitory forms
and appears to be ineligible under § 101.
Although the Board is authorized to reject claims under 37 C.F.R.
§ 41.50(b), no inference should be drawn when the Board elects not to do so.
See Manual of Patent Examining Procedure (MPEP) 1213.02.