Ex Parte Wagner et al

Patent Trial and Appeal Board

Oct 10, 2013

11811229 (P.T.A.B. Oct. 10, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/811,229 06/08/2007 Andre Wagner 11884/500701 6247
26646 7590 10/11/2013
KENYON & KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004
EXAMINER
WILSON, CANDICE D C
ART UNIT PAPER NUMBER
3629
MAIL DATE DELIVERY MODE
10/11/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ANDRE WAGNER, ANDREAS POTH,
BARE SAID, CHRISTOPH LUBBE,
HORST F. SCHAUDE, SILKE STORCH,
and TOBIAS BRANDL
____________________

Appeal 2011-010707
Application 11/811,229
Technology Center 3600
____________________

Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-010707
Application 11/811,229

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE DECISION
We AFFIRM.1

BACKGROUND
Appellants’ invention relates to a tool for automatically executing
relevant testing in an Application Platform (Spec., para. [01]).
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A computer-implemented method of automatically
testing a changed object within an application platform and
objects related to the changed object within the application
platform, the method comprising:
constructing, by a computer processor, a decision tree
data structure identifying a hierarchy of relations among all
objects within the application platform;
storing, by the computer processor, the decision tree data
structure in a component relation database;
responsive to an indication that an object has been
changed, accessing, by the computer processor, the component
relation database to search the decision tree data structure for
automatically identifying objects related to the changed object
based on a criteria that is applied to the decision data structure;
identifying, by the computer processor, a test plan
associated with the changed object from a testing plan database;

1 Our decision will refer to the Appellants’ Appeal Brief (“App. Br.,” filed
January 13, 2011) and Reply Brief (“Reply Br.,” filed May 23, 2011), and
the Examiner’s Answer (“Ans.,” mailed April 1, 2011).
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identifying, by the computer processor, test plans
associated with objects that had been determined to be related
to the changed object from the testing plan database;
retrieving, by the computer processor, the identified test
plan associated with the changed object and the identified test
plans associated with the related objects; and
automatically performing, by the computer processor, the
identified test plans for the changed object and objects related
thereto.

THE REJECTION
The following rejection is before us for review:
Claims 1-19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shei (US 5,703,708, iss. Dec. 30, 1997) in view of Jim
(US 2002/0007298 A1, pub. Jan. 17, 2002) and further in view of Gopal
(US 2008/0071844 A1, pub. Mar. 20, 2008).

ANALYSIS
Independent claim 1 and dependent claims 2-5
We are not persuaded that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) by Appellants’ argument that the combination of
Shei, Jim, and Gopal does not disclose or suggest “identifying objects
related to the changed object based on a criteria that is applied to the
decision data structure,” as recited in claim 1 (App. Br. 5-6 and Reply
Br. 2-3). Instead, we agree with and adopt the Examiner’s response to
Appellants’ argument as set forth at pages 8-10 of the Answer.
We note that the Examiner acknowledges that Shei does not explicitly
disclose the argued feature, and the Examiner relies on Jim and Gopal to
cure the deficiency of Shei (Ans. 5-6). The Examiner thus cites Figures 2a
and 2b and paragraphs [0042] and [0043] of Jim as disclosing a hierarchy of
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business activities and tasks associated with business categories organized in
a tree structure, i.e., a decision tree (Ans. 5), and cites paragraphs [0018],
[0019], [0021], [0024], [0032], and [0033] of Gopal as disclosing
“identifying objects related to the changed object based on a criteria”
(Ans. 5-6).
Appellants argue that the tree structure in Jim is used to organize
business files and not for any other purpose, e.g., to identify objects related
to a changed object by applying criteria to the structure (App. Br. 5-6 and
Reply Br. 3), and that Gopal does not disclose that “its meta data objects are
related based on any tree let alone a decision tree” (App. Br. 6 and Reply
Br. 3). However, the Examiner relies on the combination of Jim and Gopal,
and not on either one of them alone, as teaching the argued limitation. The
argument that a single reference alone does not disclose all the recited claim
limitations is not persuasive because non-obviousness cannot be established
by attacking the references individually when the rejection is based on the
teachings of a combination of references. See In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986). Moreover, we agree with the Examiner that
Gopal discloses hierarchal relationships between metadata objects and
higher level objects, and further describes the examination and retrieval of
objects that are impacted by an information change (Ans. 10, citing Gopal,
paras. [0018], [0019], [0021], and [0024]).
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 103(a). We also will sustain the Examiner’s
rejection of dependent claims 2-5, which were not separately argued.
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Independent claims 6 and 11 and dependent claims 7-10
Appellants argue that independent claims 6 and 11 are allowable for
the same reasons as set forth with respect to claim 1 (App. Br. 6 and Reply
Br. 3). We are not persuaded, for the reasons set forth above, that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a). Therefore,
we will sustain the Examiner’s rejection of claims 6 and 11 under 35 U.S.C.
§ 103(a). We also will sustain the Examiner’s rejection of claims 7-10,
which depend from claim 6 and were not separately argued.
Dependent claims 12-19
Dependent claims 12-15 and 16-19 depend from independent claims 1
and 6, respectively. Each of claims 12-19 further defines the criteria that are
applied to the decision tree data structure to identify an object related to the
changed object. For example, claim 12 recites that “the pre-determined
criteria is that an identified object is related to the changed object if the
identified object is below the changed object in the hierarchy of the decision
tree data structure.”
We are not persuaded by Appellants’ argument that the Examiner
erred in rejecting claims 12-19 under 35 U.S.C. § 103(a) because Jim fails to
disclose or suggest the specific relationships recited in claims 12-19 (App.
Br. 7 and Reply Br. 3-5). Instead, we agree with the Examiner that the
features on which Appellants rely, i.e., the specific nature of the criteria, do
not affect how the method of claim 1 is performed; nor do they affect the
structure or operation of the claimed article of manufacture of claim 6
(Ans. 11-12). As such, these features constitute non-functional descriptive
material that may not be relied on for patentability. See In re Ngai, 367 F.3d
1336, 1339 (Fed. Cir. 2004); cf. In re Gulack, 703 F.2d 1381, 1385 (Fed.
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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). See also Ex parte Mathias, 84 USPQ2d
1276, 1279 (BPAI 2005) (informative).
Appellants argue that the features are functional because “different
changed objects and objects related to the changed objects may be identified
based on different criteria, and different test plans may be retrieved based on
the different changed objects and objects related to the changed objects, and
finally, the different test plans may be performed” (Reply Br. 5). Yet the
fact that different criteria may cause different objects to be affected and
different test plans to be performed is not an indication that the specifics of
the criteria affect the way the claimed method is performed or the structure
and/or operation of the claimed article of manufacture; as presently claimed,
these criteria have the characteristics of descriptive labels, rather than
functions. As the Examiner explained:
The method . . . and article of manufacture would perform the
same way regardless of how, specifically, the related object is
related to the changed object (i.e., where in relation to the
changed object, that the related objects are situated or organized
in the hierarchy). In other words, the related objects would still
be identified, and the tests plans would still be identified,
retrieved and performed on the related objects the same way,
regardless of how the related object is related to the changed
object. The Examiner asserts that the “criteria” appears to
function as no more than the data identifying the related object.

(Ans. 12).
In view of the foregoing, we will sustain the Examiner’s rejection of
claims 12-19 under 35 U.S.C. § 103(a).

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DECISION
The Examiner’s rejection of claims 1-19 under 35 U.S.C. § 103(a) is
affirmed.
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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