Ex Parte Ruffolo et al

Board of Patent Appeals and Interferences

May 25, 2010

10411466 (B.P.A.I. May. 25, 2010)

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
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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”).
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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.
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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
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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
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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.
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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
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“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
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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).
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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.
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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

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