Ex Parte Tsaur et al

Patent Trial and Appeal Board

Aug 31, 2018

14247410 (P.T.A.B. Aug. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/247,410
81505
ORACLE
7590
FILING DATE
04/08/2014
09/05/2018
(Oracle formerly d/b/a Sun Microsystems)
8055 East Tufts A venue
Suite 450
Denver, CO 80237
FIRST NAMED INVENTOR
Erwin Tsaur
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
ORA140372-US-NP 4069
EXAMINER
WHEATON, BRADFORD F
ART UNIT PAPER NUMBER
2197
NOTIFICATION DATE DELIVERY MODE
09/05/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ptomail@mfblaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERWIN TSAUR, XIANGTAO YOU, and XIAO-DONG ZHAO
Appeal2018-002495
Application 14/247,410
Technology Center 2100
Before JASON V. MORGAN, JEREMY J. CURCURI, and
NABEEL U. KHAN, Administrative Patent Judges.
CURCURI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-14 and 16-20. See Final Act. 1. We have jurisdiction
under 35 U.S.C. § 6(b ).
Claims 1, 2, 8, 9, 12, and 16-19 are rejected under 35 U.S.C. § 103 as
obvious over Baron (US 2011/0214110 Al; published Sep. 1, 2011) and
Quiroga (US 7,039,899 Bl; issued May 2, 2006). Final Act. 4--9.
Claims 3 and 4 are rejected under 35 U.S.C. § 103 as obvious over
Baron, Quiroga, and Hofrichter (US 7,260,597 B 1; issued Aug. 21, 2007).
Final Act. 10-11.
1 Oracle International Corporation is the real party in interest. App. Br. 1.
Appeal2018-002495
Application 14/247,410
Claims 5-7 are rejected under 35 U.S.C. § 103 as obvious over Baron,
Quiroga, and Mishra (US 2007 /0234305 Al; published Oct. 4, 2007). Final
Act. 11-12.
Claims 10, 11, 13, and 14 are rejected under 35 U.S.C. § 103 as
obvious over Baron, Quiroga, and Gupta (US 2009/0044096 Al; published
Feb. 12, 2009). Final Act. 12-13.
Claim 20 is rejected under 35 U.S.C. § 103 as obvious over Baron,
Quiroga, and Gordon (US 2012/0278725 Al; published Nov. 1, 2012).
Final Act. 14--15.
We reverse.
STATEMENT OF THE CASE
Appellants' invention relates to "frameworks for injecting faults into
or otherwise simulating errors in test code paths of software to assess the
appropriateness of exception handling by the software." Spec. ,r 1. Claim 1
is illustrative and reproduced below:
1. A computer-implemented method, comprising:
extracting, from a portion of a software program product,
embedded instructions for manipulating data in the software
program product;
generating a script for manipulating the data from the
extracted instructions;
compiling the software program product into a binary
file, wherein the compiling includes replacing the portion of the
software program product with a noop;
using the script, replacing the noop with code for
manipulating the data; and
executing the binary file to execute the data manipulation
code and simulate an error path in the binary file.
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Appeal2018-002495
Application 14/247,410
PRINCIPLES OF LAW
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential).
ANALYSIS
THE OBVIOUSNESS REJECTION OF CLAIMS 1, 2, 8, 9, 12, AND 16-19 OVER
BARON AND QUIROGA
Contentions
The Examiner finds Baron and Quiroga teach all limitations of claim
1. Final Act. 4---6. In particular, the Examiner finds Quiroga teaches
"extracting, from a portion of a software program product, embedded
instructions for manipulating data in the software program product" as
recited in claim 1. Final Act. 5. ( citing Quiroga col. 2, 11. 45-51; claim 1 );
see also Ans. 2-8. The Examiner reasons
it would have been obvious to one of ordinary skill in the art
before the effective filing date of the claimed invention to modify
the teachings of Baron to include the teachings of Quiroga. The
motivation/suggestion for modification is to reduce the amount
of work and cost associated with script generation and thus
improve usability.
Final Act. 6; see also Ans. 8.
Appellants present the following principal arguments:
1. Quiroga does not teach "extracting, from a portion of a software
program product, embedded instructions for manipulating data in the
software program product" as recited in claim 1. See App. Br. 6-12; see
also Reply Br. 2---6. For example, Appellants argue "the scripts generated in
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Appeal2018-002495
Application 14/247,410
Quiroga are not generated from instructions embedded in the software as
recited in independent claim 1. Rather, the scripts in Quiroga are generated
by a script generator analyzing the software code and determining the
relationships between, and options available for, various objects." App. Br.
7; see also App. Br. 8 ("[T]he script generator 500 in Quiroga determines
how to manage objects during testing from metadata 402.")
11. There is no motivation to combine the references. See App. Br.
12-14; see also Reply Br. 7.
Our Review
Quiroga discloses
In a method according to another embodiment of the
present invention, the method facilitates automatically
generating a script for testing software. The method comprises
retrieving information from a first set of data defining software,
analyzing the retrieved information, and generating a script from
the analyzed retrieved information for testing the software.
Quiroga col. 2, 11. 45-51 ( emphasis added).
Quiroga discloses
1. A method of automatically generating a script for testing
software, the method comprising:
retrieving information from a first set of data defining the
software;
analyzing the retrieved information, the retrieved
information including application objects of the software to be
tested and application structure information on how the
application objects are related; and
automatically generating a script from the analyzed
retrieved information for testing the software, the script
including application logic generated from the first set of data
defining the software, the application logic capable of
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Appeal2018-002495
Application 14/247,410
performing actions with the software to test the software, the
actions based on the application objects and the application
structure of the software.
Quiroga claim 1 ( emphasis added).
Thus, Quiroga discloses generating a script from retrieved
information. However, the retrieved information in Quiroga is data defining
the software including application objects and application structure
information on how the application objects are related. In other words, the
retrieved information in Quiroga is metadata, and is not embedded
instructions for manipulating data in the software program product. See
Quiroga col. 2, 11. 45-51, claim 1; see also Quiroga Abstract ("The script
generator automatically generates a script from metadata that includes code
defining the application software."). Thus, Quiroga does not teach
"extracting, from a portion of a software program product, embedded
instructions for manipulating data in the software program product" as
recited in claim 1, and the Examiner erred in making such a finding. To the
extent metadata is, in some sense, instructional, this does not make the
metadata embedded instructions in a software program product. See
Spec. ,II O ("various sets of instructions for manipulating code and/or data of
a software product (e.g., simulating faults) may be embedded (e.g., at
software development time) directly into the software product to be
tested.").
In addition, the Examiner's reason to combine the references-to
reduce the amount of work and cost associated with script generation and
thus improve usability-lacks a rational underpinning. See Final Act. 6; see
also Ans. 8. The Examiner does not show that Quiroga's script generation
techniques would be applicable to Baron because, as discussed above,
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Appeal2018-002495
Application 14/247,410
Quiroga does not extract embedded instructions from a portion of a software
program product.
We, therefore, do not sustain the Examiner's rejection of claim 1. 2
We also do not sustain the Examiner's rejection of claim 2, which depends
from claim 1.
Independent claim 8 recites
wherein the at least one instruction set provides instructions for
manipulating data in the software program product to simulate a
fault path in the software program product at runtime, wherein
the embedded instruction set is configured to be extracted from
the location in the software program product before compilation
of the software program product.
Accordingly, we do not sustain the Examiner's rejection of claim 8 for the
same reasons discussed above when addressing claim 1. 3 We also do not
sustain the Examiner's rejections of claims 9, 12, and 16, which depend
from claim 8.
Independent claim 18 recites "extracts, from a portion of a software
program product, embedded instructions for manipulating code of the
software product." Accordingly, we do not sustain the Examiner's rejection
of claim 18 for the same reasons discussed above when addressing claim 1.
2 Should prosecution continue, the Examiner may wish to consider whether
Baron's disclosure (see Baron Abstract) of adding a no-operation instruction
in place of the conditional code, and storing the compiled conditional code
separate from the executable code, teaches "extracting, from a portion of a
software program product, embedded instructions for manipulating data in
the software program product" as recited in claim 1.
3 Should prosecution continue, the Examiner may wish to consider whether
claim 8 recites an abstract idea that may be performed mentally or with pen
and paper.
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Application 14/247,410
We also do not sustain the Examiner's rejections of claim 19, which depends
from claim 18.
THE REMAINING REJECTIONS
The Examiner does not find that any of the various secondary
references cures the deficiencies of Baron and Quiroga discussed above. See
Final Act. 10-15; see also Ans. 9--13.
We, therefore, do not sustain
the Examiner's rejection of claims 3 and 4 as obvious over Baron,
Quiroga, and Hofrichter;
the Examiner's rejection of claims 5-7 as obvious over Baron,
Quiroga, and Mishra;
the Examiner's rejection of claims 10, 11, 13, and 14 as obvious over
Baron, Quiroga, and Gupta; and
the Examiner's rejection of claim 20 as obvious over Baron, Quiroga,
and Gordon.
ORDER
The Examiner's decision rejecting claims 1-14 and 16-20 is reversed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
REVERSED
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