Ex Parte Ruffolo et alDownload PDFBoard of Patent Appeals and InterferencesMay 25, 201010411466 (B.P.A.I. May. 25, 2010) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte NUZIO RUFFOLO, KEITH CHAN, ENZO CIALINI, and ANTHONY DI LORETO ____________________ Appeal 2009-006514 Application 10/411,4661 Technology Center 2100 ____________________ Decided: May 25, 2010 ____________________ Before JOSEPH L. DIXON, JAY P. LUCAS, and THU A. DANG, Administrative Patent Judges. LUCAS, Administrative Patent Judge. DECISION ON APPEAL 1 Application filed April 10, 2003. Appellants claim the benefit under 35 U.S.C. § 119 of Canadian patent number 2,381,596, filed April 12, 2002. The real party in interest is International Business Machines Corporation. Appeal 2009-006514 Application 10/411,466 STATEMENT OF THE CASE Appellants appeal from a final rejection of claims 1 to 4, 6 to 10, 12, 14, 15, and 17 to 23 under authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b). Claims 5, 11, 13, and 16 are cancelled. We affirm the rejection. Appellants’ invention relates to a method of generating test plans for efficiently testing the functionality of computer software components (Spec. 2, ll. 3-10). In the words of Appellants: Distribution lists are associated with each component of computer software. A distribution list identifies items related to a component of computer software and also identifies a desired number of occurrences of each item in various test cases related to a component test plan. . . . [O]ne test item is included per test case. For each component test plan, an upper limit is set which limits the number [of] occurrences of items included with each test case. (Spec. 2, ll. 11-15). Claims 1 and 14 are exemplary, and are reproduced below: 1. A method for generating a test plan having a plurality of directions for testing a component of computer software, comprising: providing a distribution list associated with the component of computer software to be tested, wherein the distribution list identifies occurrences of test items related to the component, wherein 2 Appeal 2009-006514 Application 10/411,466 each test item comprises one of a feature, task or factor related to the component of computer software to be tested; and inserting test items into a component test plan for the component based on the distribution list, wherein said distribution list identifies limits for including occurrences of test items in said component test plan, and wherein said component test plan provides a collection of tests for testing the component of computer software. 14. A method for generating an impact report comprising: identifying a portion of test plan to be removed from a test plan, said identified portion of test plan having sub-portions; removing said identified portion of test plan from said test plan to generate a modified test plan; comparing said identified portion of test plan against said modified test plan; and generating said impact report indicating said sub-portions and corresponding occurrences of said sub-portions in said modified test plan. The prior art relied upon by the Examiner in rejecting the claims on appeal is: Institute of Electrical and Electronics Engineers, Inc., “IEEE Standard for Software Test Documentation: IEEE Std 829-1998,” December 16, 1998 (hereinafter “IEEE 829”). 3 Appeal 2009-006514 Application 10/411,466 REJECTION The Examiner rejects the claims as follows: Claims 1 to 4, 6 to 10, 12, 14, 15, and 17 to 23 stand rejected under 35 U.S.C. § 103(a) for being obvious over IEEE 829. Appellants contend that IEEE 829 does not render the claimed subject matter unpatentable for failure of the references to teach claimed limitations (App. Br. 13, middle; 17, middle; 18, bottom; 19, middle). The Examiner contends that each of the claims is properly rejected (Ans. 22, top). The claims are grouped as per Appellants’ Brief. We have only considered those arguments that Appellants actually raised in the Brief. Arguments that Appellants could have made but chose not to make in the Brief have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii). ISSUE The issue is whether Appellants have shown that the Examiner erred in rejecting the claims under 35 U.S.C. § 103(a). The issue specifically turns on whether IEEE 829 discloses Appellants’ claim limitations “each test item comprises on of a feature, task or factor related to the component of computer software to be tested” (claim 1) and “identifies limits for including occurrences of test items in said component test plan,” as recited in claim 1. 4 Appeal 2009-006514 Application 10/411,466 FINDINGS OF FACT The record supports the following findings of fact (FF) by a preponderance of the evidence. Disclosure 1. Appellants have invented a method and system of making test plans for computer software components (claim 1). The claimed “distribution list” includes test items related to software. IEEE 829 2. The IEEE 829 reference discloses a method of making test plans for computer software and systems within the software, such as a Corporate Software Payroll system (p. 21, bottom; Ans. 16, middle). IEEE 829’s “Outline” includes “test items” related to software (section 4.2 and 4.2.1). PRINCIPLES OF LAW Appellants have the burden on appeal to the Board to demonstrate error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006). “A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.” 37 C.F.R. § 1.111(b). “Argument. The contentions of appellant with respect to each ground of rejection presented for review in paragraph (c)(1)(vi) of this section, and the basis therefor, with citations of the statutes, regulations, authorities, and 5 Appeal 2009-006514 Application 10/411,466 parts of the record relied on. . . . A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.” 37 C.F.R. § 41.37(c)(1)(vii). “[O]ur reviewing court has held that nonfunctional descriptive material cannot lend patentability to an invention that would have otherwise been anticipated by the prior art.” Ex parte Mathias, Appeal No. 2005-1851, 2005 WL 6144703, at *3 (BPAI 2005) (citing In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when descriptive material is not functionally related to the substrate, the descriptive material will not distinguish the invention from the prior art in terms of patentability)). ANALYSIS From our review of the administrative record, we find that the Examiner presents the conclusions of unpatentability on pages 3 to 11 of the Examiner’s Answer. In opposition, Appellants present a number of arguments. Arguments with respect to the rejection of claims 1 to 4, 6 to 10, 12, 14, 15, and 17 to 23 under 35 U.S.C. § 103(a) The Examiner finds a disclosure of Appellants’ “test items” (claim 1) in IEEE’s outline that lists “Test items” at section 4.2.3 (Ans. 13, bottom). Appellants argue: “‘[T]est items’ as that term is used in IEEE 829 is not the same as the test items recited in claim 1 wherein it is positively 6 Appeal 2009-006514 Application 10/411,466 recited that ‘each test item comprises one of a feature, task or factor related to the component of computer software to be tested.” (App. Br. 13, middle). In reply, the Examiner states that Appellants have merely recited the claim language. According to the Examiner, Appellants’ response is non- compliant with 37 C.F.R. § 1.111(b), cited above. We agree with the Examiner. Merely asserting the non-obviousness of claims by pointing out what the claim recites is not an argument. (See 37 C.F.R. § 41.37(c)(1)(vii), cited above.) Rather, it is a conclusory statement. On the other hand, pointing out how the claims patentably distinguish over the prior art would have been in accordance with 37 C.F.R. § 1.111(b), cited above. Here, the attorney’s statement (“[T]est items’ as that term is used in IEEE 829 is not the same as the test items recited in claim 1”) has no basis in “statutes, regulations, authorities, and parts of the record.” Since Appellants have failed to point out how the claims are patentably distinguished over the prior art and have made a statement that merely points out what claim 1 recites (37 C.F.R. § 41.37(c)(1)(vii)), the Board may affirm the Examiner’s obviousness rejection. We find that Appellants have invented a method and system of making test plans for computer software components as required in claim 1 (FF#1). The claimed “distribution list” includes test items related to software (id.). In comparison, we find that the IEEE 829 reference discloses a method of making test plans for computer software and systems within the software, such as a Corporate Software Payroll system (FF#2). IEEE 829’s “Outline” includes “test items” related to software (id.). On the record before us, we find no error in the rejection. 7 Appeal 2009-006514 Application 10/411,466 Next, the Examiner finds that IEEE 829’s “test plan global outline” is similar to Appellants’ claimed “distribution list” of claim 1 (Ans. 12, middle). The Examiner states: It would have been obvious for one [of ordinary skill] in the art … to implement the outline for a corporate Text plan by IEEE_829 so that the outline … is presented as a distribution list[.] [T]he scope [of the] outline … would enable the corporate Management Review committee or management Group to further adapt changes to any preliminary plan … to refine the resources needed to carry out testing of … a system test plan. (Ans. 5, bottom to 6, top). The motivation of the skilled artisan would have been to make incremental refinements to the test plan, thus improving the testing scheme (Ans. 6, top). Appellants contend that IEEE 829’s list would not have been recognized by a person of ordinary skill in the art as the claimed “distribution list” that “identifies limits for including occurrences of test items in said component test plan” of claim 1 (App. Br. 17, middle). “[N]onfunctional descriptive material cannot lend patentability to an invention that would have otherwise been [rendered unpatentable by the prior art].” (Ex parte Mathias, cited above.) We find that Appellants’ claimed “distribution list” as recited in claim 1 is merely nonfunctional descriptive material. The mere fact that Appellants’ claimed “test items” are organized into Appellants’ “distribution list” does not lend patentability to the exemplary claim. “Distribution list” is nonfunctional because nothing is changed, altered, or transformed by organizing Appellants’ so-called “test items” into the claimed “distribution list.” In light of Ex parte Mathias, cited above, we find no difference between IEEE-829’s outline containing test items and Appellants’ claimed 8 Appeal 2009-006514 Application 10/411,466 “distribution list.” Accordingly, we find no error in the Examiner’s rejection. Dependent claim 4 recites, in relevant part, “wherein each group of test cases includes a unique combination of occurrences of said test items.” Regarding claim 4, the Examiner finds that IEEE-829 discloses “all software features and combinations of software features [are] to be tested.” (Section 4.2.4; Ans. 14, top). Appellants argue: “Combinations [of] features to be tested is not the same as organizing test items into groups of test cases wherein each group of test cases include[s] ‘a unique combination of occurrences of test items.’” (App. Br. 18, bottom). In reply, the Examiner again finds Appellants’ response non- compliant with 37 C.F.R. § 1.111(b) (Ans. 14, middle). We agree with the Examiner for the same reasons we stated above regarding Appellants’ conclusory statements supporting claim 1. (See supra.) Accordingly, we find no error in the rejection of claim 4. Referring to dependent claim 8, Appellants argue: “[N]either in the sections referred to by the Examiner nor anywhere else in IEEE 829 is there any disclosure or suggestion of generating any type of list by the steps recited in claim 8.” (App. Br. 19, middle). We incorporate the Examiner’s findings regarding two of the three “determining” steps and direct Appellants’ attention to the Examiner’s Answer for further details. (See Ans. 7, top.) Regarding the other “determining” step, the Examiner finds that “it would have been obvious that [the IEEE 829 reference’s] Payroll System and Test plan … would [use] the above correspondence analysis to determine … the limit of occurrences of test items that would be part of the adjusted Test plan” because the test 9 Appeal 2009-006514 Application 10/411,466 plan includes regressive analysis (IEEE 829, section 6.7, p. 23, “Regression”; Ans. 7, top to middle). Again, the Examiner finds Appellants’ response non-compliant with 37 C.F.R. § 1.111(b) (Ans. 14, middle). We agree with the Examiner for the above-stated reasons regarding claim 1. Accordingly, we find no error. Dependent claim 10 recites, in relevant part, “generating said impact report.” Appellants contend “[o]nly the [Appellants’] application discloses generating an impact report, and only [Appellants’] application discloses generating an impact report by the steps recited in claim 10.” (App. Br. 20, bottom). We incorporate the Examiner’s findings regarding claim 10’s “identifiying,” “removing,” “comparing,” and “generating” steps and refer Appellants to the Examiner’s Answer for more details (Ans. 7, bottom to 8, bottom). We find that “generating said impact report” as recited in claim 10 is merely non-functional descriptive material in accordance with In re Ngai, cited above. The mere fact that a report generates because of the method steps of claim 10 does not lend patentability to claim 10. Accordingly, we find no error. Exemplary claim 14 recites, in relevant part, “generating said impact report indicating … corresponding occurrences of said sub-portions in said modified test plan.” The Examiner finds that “occurrences,” as claimed, are “occurrences of test items in terms of requirement with respect to time, frequency, and scope related to [these] test items when such is documented prior to test implementation.” (Ans. 16, top). 10 Appeal 2009-006514 Application 10/411,466 Appellants contend that “the documentation described on page 21 of IEEE 829, even if it could be implement as a list, does not identify ‘occurrences of test items related to components to be tested,’ but describes a basis for correct operation of a test.” (App. Br. 13, middle). Appellants’ argument is not responsive to the Examiner’s findings. The Examiner cited IEEE 829 for disclosing “procedures that are to be executed in light of required criteria or allotted effort.” (Ans. 16, top). The Examiner interprets “occurrences” to mean the number of times tasks are repeated in a regressive software component testing scheme. Tasks that are repeated a given number of times (Appellants’ claimed “occurrences”) include task (6), “transmit[ting] the corporate payroll system to the test group”; task (8), “assembl[ing] and linking the corporate payroll system”; and task (9), “execut[ing] data entry test procedures” on IEEE 829’s “Task list.” (IEEE 829, p. 27). We note that Appellants have not set forth a specific definition of the claimed “occurrences” in the Specification (Spec. 2, ll. 11-15). Nor have Appellants explained how the Examiner’s findings, as described above, differ from what is recited in claim 1. (See 37 C.F.R. § 41.37(c)(1)(vii); 37 C.F.R. § 1.111(b).) Accordingly, we find no error. CONCLUSION OF LAW Based on the findings of facts and analysis above, we conclude that the Examiner did not err in rejecting claims 1 to 4, 6 to 10, 12, 14, 15, and 17 to 23. 11 Appeal 2009-006514 Application 10/411,466 DECISION We affirm the Examiner’s rejection of claims 1 to 4, 6 to 10, 12, 14, 15, and 17 to 23. 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). AFFIRMED peb IBM CORP (YA) C/O YEE & ASSOCIATES PC P.O. BOX 802333 DALLAS, TX 75380 12 Copy with citationCopy as parenthetical citation