Ex Parte Sutton

Board of Patent Appeals and Interferences

Feb 28, 2012

10141719 (B.P.A.I. Feb. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CHRISTOPHER K. SUTTON
____________________

Appeal 2009-014211
Application 10/141,719
Technology Center 2100
____________________

Before ERIC S. FRAHM, KRISTEN L. DROESCH, and DENISE M.
POTHIER, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE1
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-24. Claims 25-27 have been canceled (Br. 5; Amendment filed
June 29, 2007). We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
Exemplary Claim
Exemplary independent claim 1 under appeal reads as follows
(emphases added):
1. A method of operating a test executive system for electronically
testing a device under test (DUT) that is separate and distinct from said test
executive system, said method comprising:
electronically storing a plurality of tests and a procedure, each test
comprising software code defining a test algorithm and said procedure
comprising data describing an ordered list of said tests;
expanding said procedure by combining said software code of
predetermined ones of said tests as determined by said ordered list to
populate a test software object; and
executing said software code of said test software object containing
said predetermined ones of said tests expanded by said procedure on said
DUT and generating a data structure comprising the results of said
predetermined tests.

1 Throughout our Decision, we refer to the Appeal Brief (“App. Br.”) filed
January 14, 2008, the Examiner’s Answer (“Ans.”) mailed May 6, 2009, and
the Reply Brief (“Reply Br.”) filed July 6, 2009.
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Rejections
(1) The Examiner rejected claims 1, 14, and 21 as being anticipated
under 35 U.S.C. § 102(e) by Jibbe (US 6,463,552 B1). Ans. 4-6.
(2) The Examiner rejected claims 1-9, 13-16, and 18-24 as being
unpatentable under 35 U.S.C. § 103(a) over Ekstedt (US 5,206,582) and
Whatis?com’s Encyclopedia of Technology Terms, p. 491 (Sept. 2001)
(hereinafter, “Whatis”). Ans. 7-18.
(3) The Examiner rejected independent claims 1 and 14 as being
unpatentable under 35 U.S.C. § 103(a) over Godfrey (US 6,662,217 B1)
alone. Ans. 18-19.
(4) The Examiner rejected dependent claim 18 as being unpatentable
under 35 U.S.C. § 103(a) over Ekstedt and Whatis. Ans. 21-22; Final Rej. 7;
see Non-final Office Action mailed March 26, 2007 at pp. 21-22 for the
rejection of claim 18.
(5) The Examiner rejected dependent claims 10-12 and 17 as being
unpatentable under 35 U.S.C. § 103(a) over Ekstedt, Whatis, and Brown (US
6,211,513 B1). Ans. 20-23; Final Rej. 7-8.

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Appellant’s Contentions
(A) Appellant contends (App. Br. 10-12; Reply Br. 4-6) that the
Examiner erred in rejecting claims 1, 14, and 21 as being anticipated by
Jibbe because:2
(1) Jibbe fails to teach the step of “expanding said procedure by
combining said software code of predetermined ones of said tests as
determined by said ordered list to populate a test software object,” as recited
in claim 1 (App. Br. 10-11);
(2) Jibbe fails to teach that the test script is expanded, and “never
indicates that a ‘test script’ is expanded to ‘populate’ the commands object
1010 with the ‘software code’ of predetermined tests (or commands)” (App.
Br. 10);
(3) Jibbe’s command object 1020 is just a data object and is not
associated or combined with any actual software code (Reply Br. 5-6);
(4) Jibbe fails to expand a procedure prior to execution of the
procedure (App. Br. 12); and
(5) Jibbe fails to indicate that the test script is compiled (Reply Br. 6).
(B) Appellant contends (App. Br. 13-15; Reply Br. 6-7) that the
Examiner erred in rejecting claims 1-9, 13-16, and 18-24 as being obvious
over the combination of Ekstedt and Whatis because:3
(1) Ekstedt fails to teach or suggest a method of operating a test
executive system that includes expanding a procedure by combining

2 Separate patentability is not argued for claims 14 and 21, and Appellant
relies on the arguments as to claim 1 (see App. Br. 12; Reply Br. 6).
3 Separate patentability is not argued for claims 2-9, 13-16, and 18-24, and
Appellant relies on the arguments as to claim 1 (see App. Br. 15; Reply Br.
7).
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software code of plural tests “as determined by said ordered list to populate a
test software object,” as recited in claim 1 (App. Br. 13; Reply Br. 6-7);
(2) Ekstedt’s column 4, lines 43-46 fails to teach expanding or
combining as recited in claim 1, and merely calls subroutines as needed
(App. Br. 13; Reply Br. 7); and
(3) Whatis describes object-oriented design in general, but fails to
teach or suggest populating a test software object by combining the software
code of predetermined tests, as recited in claim 1 (App. Br. 15).
(C) Appellant contends (App. Br. 15-16; Reply Br. 8) that the
Examiner erred in rejecting claims 1 and 14 as being obvious over Godfrey
alone because:4
(1) Godfrey’s column 7, lines 3-6 “does not indicate that the control
object 130 interfaces with test objects, or that test objects should be
compiled into a ‘test software object’” (App. Br. 16);
(2) Godfrey discloses using object oriented design, but does not
disclose expansion of a procedure by combining software code of
predetermined tests, as recited in claim 1 (App. Br. 15; Reply Br. 8);
(3) Godfrey’s placement of tests in an HyperText Transfer Protocol
(HTTP) POST request is not the equivalent of, and does not suggest,
combining software code of plural tests in a test software object, as recited
in claim 1 (App. Br. 16); and
(4) Godfrey’s script, including instructions interpreted by an
application, is not the same as a software object comprising compiled code
(App. Br. 16).

4 Separate patentability is not argued for claim 14, and Appellant relies on
the arguments as to claim 1 (see App. Br. 16; Reply Br. 8).
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(D) Appellant contends (App. Br. 17; Reply Br. 8) that the Examiner
erred in rejecting claims 10-12 and 17 as being obvious over Ekstedt,
Whatis, and Brown because Brown fails to cure the deficiencies of Ekstedt
and Whatis, and “Microsoft Computer Dictionary 5th Edition” (relied on by
the Examiner as a “teaching reference” at pages 22-23 of the Non-final
Office Action mailed March 26, 2007) fails to cure the deficiencies of
Ekstedt, Whatis, and Brown.
(E) Appellant contends (App. Br. 15) that the Examiner erred in
rejecting claim 18 (which recites that a memory stores a DLL file associated
with one of the models) as being obvious under 35 U.S.C. § 103(a) over
Ekstedt and Whatis because “Microsoft Computer Dictionary 5th Edition”
(relied on by the Examiner as a “teaching reference” at page 21 of the Non-
final Office Action mailed March 26, 2007; Final Rej. 7) fails to cure the
deficiencies of Ekstedt and Whatis.
Issue on Appeal
Has the Examiner erred in rejecting claims 1-24 as being anticipated
or obvious because Jibbe, Whatis, and Ekstedt individually fail to teach or
suggest the expanding and executing limitations as set forth in each of
independent claims 1, 14, and 21; and similarly because Godfrey fails to
teach or suggest the expanding and executing limitations as set forth in each
of independent claims 1 and 14?5

5 We recognize that Appellant’s arguments present additional issues. Many
of the arguments presented by the additional issues are not persuasive;
nonetheless we were persuaded of error by this issue and as such we do not
reach the additional issues as this issue is dispositive of the appeal.

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ANALYSIS
We agree with Appellant’s contentions (A)(1), (A)(2), (B)(1)-(3),
(C)(1)-(3) specifically enumerated above. Jibbe, Ekstedt, and Whatis, taken
individually or as combined by the Examiner, fail to teach the step of
“expanding said procedure by combining said software code of
predetermined ones of said tests as determined by said ordered list to
populate a test software object,” as recited in claim 1 and similarly recited in
claims 14 and 21.
Appellant’s arguments as to the dependent claims are persuasive for
similar reasons as their corresponding independent claims. In addition,
Appellant’s arguments as to claims 10-12 and 17 are persuasive because we
agree that Brown fails to cure the noted deficiencies with regard to Ekstedt
and Whatis. We highlight that we do not agree with the Examiner that (i)
Jibbe’s executed test script is “populated” in the test object (Ans. 22); (ii)
using Eckstedt’s object oriented design and populating Ekstedt’s test
program would have been obvious to an ordinarily skilled artisan (Ans. 24);
and/or (iii) Godfrey’s script is “necessarily” a software object (Ans. 25).
Accordingly, we cannot sustain the Examiner’s § 102(e) rejection
based on Jibbe and § 103(a) rejections based on either Godfrey alone or the
various combinations of Ekstedt, Whatis, and/or Brown.

CONCLUSIONS
Jibbe, Ekstedt, and Godfrey individually fail to teach or suggest the
expanding and executing limitations as set forth in each of independent
claims 1, 14, and 21. Brown fails to cure the noted deficiencies with regard
to Ekstedt and Whatis for claims 10-12 and 17. Appellant has established
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that the Examiner erred in rejecting claims 1-24 as being unpatentable under
35 U.S.C. §§ 102(e) and 103(a).

DECISION
The Examiner's rejections of claims 1-24 are reversed.

REVERSED

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