ALLURI, CHANDRA M.

Patent Trials and Appeals Board

Dec 27, 2019

12345084 - (D) (P.T.A.B. Dec. 27, 2019)

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.
12/345,084 12/29/2008 CHANDRA M. ALLURI 05997.0055-00 7219
22852 7590 12/27/2019
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
SHAH, KAMINI S
ART UNIT PAPER NUMBER
2127
NOTIFICATION DATE DELIVERY MODE
12/27/2019 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):
regional-desk@finnegan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte CHANDRA M. ALLURI
________________

Appeal 2018-004606
Application 12/345,084
Technology Center 2100
________________

Before BRADLEY W. BAUMEISTER, MICHAEL J. STRAUSS, and
RUSSELL E. CASS, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–23, which constitute all of the pending claims.1
Appeal Br. 5. These claims stand rejected under 35 U.S.C. § 101 as being
directed to a judicial exception to patent-eligible subject matter without
significantly more and under 35 U.S.C. § 103 as being obvious. Final
Action mailed February 16, 2017 (“Final Act.”), 2–6. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Federal
Home Loan Mortgage Corporation (“Freddie Mac”). Appeal Brief filed
December 5, 2017 (“Appeal Br.”), 3.
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STANDARD OF REVIEW
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

CLAIMED SUBJECT MATTER
Appellant describes the present invention, as follows:
Systems, methods, and computer-readable storage media
are described for modeling the requirements of software to
generate test requirements. In one exemplary embodiment, a
computer-implemented method comprises generating a model of
the requirements using a tree graph model, identifying primary
paths of the tree graph model using an algorithm, and creating
test cases based on the identified primary paths.
Abstract.2

THE SECTION 101 REJECTION
Independent claim 1, illustrative of the appealed claims, is reproduced
below with paragraph numbering added for clarity and emphasis added to
the claim language that recites an abstract idea3:
1. A computer-implemented method for automated software
performance testing, performed by a processor hosted on a server

2 Rather than repeat the Examiner’s positions and Appellant’s arguments in
their entirety, we refer to the above-mentioned Appeal Brief, as well as the
following documents, for their respective details: Appellant’s Specification
originally filed December 29, 2008 (“Spec.”); the Final Action mailed
February 16, 2017 (“Final Act.”); the Examiner’s Answer mailed January
25, 2018 (“Ans.”); and the Reply Brief filed March 26, 2018 (“Reply Br.”).
3 Appellant argues all of the claims together as a group. Appeal Br. 13–39.
Accordingly, we select independent claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(1)(iv).
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and connected via a network connection to at least one networked
database, a modeling tool, and a client system, the method
comprising:
[i] retrieving modeling requirements of software;
[ii] receiving, via a graphical user interface, a user’s selection
of one or more portions of previously-created models;
[iii] generating, using the modeling tool, a tree graph model
based on the modeling requirements and the one or user-selected
more portions of previously-created models;
[iv] analyzing the tree graph model and verifying complete
path coverage for the modeling requirements, by determining
whether predicate and clause coverage criteria of the tree graph
model yields n+1 truth values, wherein n is a number of clauses
in a predicate of a logical expression in the tree graph model;
[v] selecting, using an algorithm based on the tree graph
model, a test path for traversing the tree graph model;
[vi] storing, in a memory, data associated with one or more
expected outcomes from traversing the selected test path;
[vii] generating, using an algorithm and based on the selected
test path, one or more data values that cause the processor to
traverse one or more branches of the selected test path for the
software without bugs or errors;
[viii] generating, on a display screen of the client system, a
graphical user interface including a plurality of test cases based
on the tree graph model and the data values;
[ix] generating one or more test outcomes by traversing the
entire selected test path using the generated data values;
[x] retrieving the one or more expected outcomes; and
[xi] comparing the one or more test outcomes to the one or
more expected outcomes at multiple intermediate verification
points along the selected test path.
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Principles of Law
A. SECTION 101:
Inventions for a “new and useful process, machine, manufacture, or
composition of matter” generally constitute patent-eligible subject matter.
35 U.S.C. § 101. However, the U.S. Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural
phenomena, and abstract ideas” are not patentable. Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-step framework, described in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), and Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–
77). In accordance with that framework, we first determine what concept
the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the
claims before us are drawn to the concept of intermediated settlement, i.e.,
the use of a third party to mitigate settlement risk.”); see also Bilski v.
Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’
application explain the basic concept of hedging, or protecting against
risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
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(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. at 191 (citing
Benson and Flook) (citation omitted); see also, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (internal quotation marks
omitted). “A claim that recites an abstract idea must include ‘additional
features’ to ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
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566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
B. USPTO SECTION 101 GUIDANCE:
In January 2019, the United States Patent and Trademark Office
(“USPTO”) published revised guidance on the application of 35 U.S.C.
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“2019 Guidance”), updated by USPTO, October
2019 Update: Subject Matter Eligibility (available at https://www.uspto.gov/
sites/default/files/documents/peg_oct_2019_update.pdf) (jointly referred to
as “the 2019 Guidance”); see also October 2019 Patent Eligibility Guidance
Update, 84 Fed. Reg. 55942 (Oct. 18, 2019) (“October 2019 PEG Update”)
(notifying the public of the availability of the October update).
Under the 2019 Guidance, we first look to whether the claim recites
the following:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).
2019 Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
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(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, [and] conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
2019 Guidance, 84 Fed. Reg. at 56.
Analysis
STEP 2A, PRONG 1:
Under step 2A, prong 1, of the 2019 Guidance, we first look to
whether claim 1 recites any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes). 2019 Guidance, 84 Fed. Reg. at 52–54.
Limitation [i] recites “retrieving modeling requirements of software.”
Retrieving data reasonably can be characterized as a mental process. More
specifically, retrieving data reasonably can be characterized as an
observation that can be performed in the human mind. The 2019 Guidance
recognizes mental processes, including observations, as constituting a
patent-ineligible abstract idea. 2019 Guidance, 84 Fed. Reg. at 52–54.
Accordingly, limitation [i] reasonably can be characterized as reciting a
patent-ineligible abstract idea.
Limitation [ii] recites “receiving . . . a user’s selection of one or more
portions of previously-created models.” Receiving data, like retrieving data,
reasonably can be characterized as an observation that can be performed in
the human mind. For the reasons discussed in relation to limitation [i], the
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data-receiving step of limitation [ii] also reasonably can be characterized as
reciting a patent-ineligible abstract idea.
Limitation [iii] recites “generating . . . a tree graph model based on the
modeling requirements and the one or user-selected more portions of
previously-created models.” Generating a tree graph model reasonably can
be characterized as a mental process, such as an evaluation, judgment, or
opinion that can be performed in the human mind. The 2019 Guidance
expressly recognizes such mental processes as constituting a patent-
ineligible abstract idea. 2019 Guidance, 84 Fed. Reg. at 52. Accordingly,
limitation [iii] reasonably can be characterized as reciting a patent-ineligible
abstract idea.
Limitation [iv] recites “analyzing the tree graph model and verifying
complete path coverage for the modeling requirements, by determining
whether predicate and clause coverage criteria of the tree graph model yields
n+1 truth values, wherein n is a number of clauses in a predicate of a logical
expression in the tree graph model.” Like generating a tree graph model,
analyzing a tree graph model also reasonably can be characterized as a
mental process, such as an evaluation that can be performed in the human
mind. Accordingly, limitation [iv] reasonably can be characterized as
reciting a patent-ineligible abstract idea.
Limitation [v] recites “selecting, using an algorithm based on the tree
graph model, a test path for traversing the tree graph model.” Using an
algorithm to select a test path reasonably can be characterized as a mental
process, such as an evaluation, judgment, or opinion that can be performed
in the human mind. Accordingly, limitation [v] reasonably can be
characterized as reciting a patent-ineligible abstract idea.
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Limitation [vi] recites “storing . . . data associated with one or more
expected outcomes from traversing the selected test path.” Storing data
reasonably can be characterized as a mental process such as making note of
a mental observation either in the mind or with the aid of paper and pencil.
See October 2019 PEG Update at 9 (“A claim that encompasses a human
performing the step(s) mentally with the aid of a pen and paper recites a
mental process”) (emphasis omitted). Accordingly, limitation [vi]
reasonably can be characterized as reciting a patent-ineligible abstract idea.
Limitations [vii] through [ix] read as follows:
[vii] generating, using an algorithm and based on the selected
test path, one or more data values that cause the processor to
traverse one or more branches of the selected test path for the
software without bugs or errors.
[viii] generating . . . a plurality of test cases based on the tree
graph model and the data values;
[ix] generating one or more test outcomes by traversing the
entire selected test path using the generated data values;
As explained in relation to limitation [iii], generating data reasonably
can be characterized as a mental process, such as a mental evaluation or
judgment that can be performed in the mind. For the reasons explained in
relation to limitation [iii], then, limitations [vii] through [iv] reasonably can
be characterized as reciting a patent-ineligible abstract idea.
Limitation [x] recites “retrieving the one or more expected outcomes.”
As explained in relation to limitation [i], retrieving data reasonably can be
characterized as an observation that can be performed in the human mind.
Accordingly, limitation [x] reasonably can be characterized as reciting a
patent-ineligible abstract idea.
Limitation [xi] recites “comparing the one or more test outcomes to
the one or more expected outcomes at multiple intermediate verification
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points along the selected test path.” Comparing data reasonably can be
characterized as a mental process, such as an evaluation or judgment that can
be performed in the human mind. Accordingly, limitation [xi] reasonably
can be characterized as reciting a patent-ineligible abstract idea.
For these reasons, each of claim 1’s limitations [i]–[xi] reasonably can
be characterized as reciting a judicial exception to patent-eligible subject
matter under step 2A, prong 1, of the 2019 Guidance.
STEP 2A, PRONG 2:
Under step 2A, prong 2, of the 2019 Guidance, we next analyze
whether claim 1 recites additional elements that, individually or in
combination, integrate the judicial exception into a practical application.
2019 Guidance, 84 Fed. Reg. at 53–55. The 2019 Guidance provides
exemplary considerations that are indicative of an additional element or
combination of elements integrating the judicial exception into a practical
application, such as an additional element reflecting an improvement in the
functioning of a computer or an improvement to other technology or
technical field. Id. at 55; MPEP § 2106.05(a).
Appellant argues that claim 1 cannot have a scope pre-emptive of an
abstract idea because the claims are not “broad enough to encompass any
method or system for performing the alleged abstract idea.” Appeal Br. 19;
see also id. at 25 (again discussing the preemption doctrine). This argument
is unpersuasive.
We recognize that the Supreme Court has described “the concern that
drives this exclusionary principle [i.e., the exclusion of abstract ideas from
patent-eligible subject matter] as one of pre-emption.” Alice, 573 U.S. at
216. However, characterizing preemption as a driving concern for patent
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eligibility is not the same as characterizing preemption as the sole test for
patent eligibility. As our reviewing court has explained: “The Supreme
Court has made clear that the principle of preemption is the basis for the
judicial exceptions to patentability” and “[f]or this reason, questions on
preemption are inherent in and resolved by the § 101 analysis.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(citing Alice, 573 U.S. at 216). Although “preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility.” Ariosa, 788 F.3d at 1379.
Appellant also argues that claim 1 is “directed to the use of limited
rules in a specifically-designed process, similar to the patent-eligible claims
in McRO.” Appeal Br. 27 (emphasis omitted) (citing McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)).
Appellant argues that
[in c]haracterizing “[t]he claimed improvement” as “allowing
computers to produce ‘accurate and realistic lip synchronization
and facial expressions in animated characters’ that previously
could only be produced by human animators,” the Federal Circuit
found that “[McRO’s] claim uses . . . limited rules in a process
specifically designed to achieve an improved technology result
in conventional industry practice.” That is, the claim was not
“directed to” an abstract idea because it did not focus on “a result
or effect that is itself an abstract idea”; rather, by reciting such
“limited rules[,]” the claim focused on a “specific means or
method” of achieving the result or effect. Accordingly, the court
concluded, the claim was “directed to a patentable, technological
improvement over the existing, manual 3-D animation
techniques.”
Appeal Br. 28 (underlining omitted) (citing McRO, 837 F.3d at 1314).
This argument is unpersuasive because McRO’s claim is
distinguishable from Appellant’s claim. As Appellant acknowledges,
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McRO’s claim was directed towards an improved method of enhancing
visual animation products by generating “accurate and realistic lip
synchronization and facial expressions in animated characters.” Appeal Br.
28 (citing McRO, 837 F.3d at 1314). Appellant’s claim 1, on the other hand,
does not produce any improved product, such as a visual animation.
Appellant, instead, claims a computer-implemented method of retrieving
data ([i] modeling requirements of software, [ii] a selection of portions of
previously created models, and [x] expected outcomes of test-path
traversals) and using that data to analyze whether software produces
expected outcomes.
Claim 1’s data-gathering steps of limitations [i], [ii], and [x]
reasonably can be characterized as merely constituting insignificant extra-
solution activity:
An example of pre-solution activity is a step of gathering data for
use in a claimed process, e.g., a step of obtaining information
about credit card transactions [that] is recited as part of a claimed
process of analyzing and manipulating the gathered information
by a series of steps in order to detect whether the transactions
were fraudulent.
MPEP § 2106.05(g).
Also, as noted previously, claim 1’s limitation [vi] recites “storing, in
a memory, data associated with one or more expected outcomes from
traversing the selected test path.” It was well-understood that received
computer data typically must be stored—either in long-term storage or in a
short-term cache or buffer so that the data can be processed as intended. By
determining that gathering, transmitting, and displaying data constitutes
insignificant extra-solution activity, the courts also have determined, at least
implicitly, that storing data, without more, also constitutes insignificant
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extra-solution activity. As such, limitation [vi] reasonably can be
characterized as merely being directed to the insignificant extra-solution
activity of storing data.
Claim 1’s other steps—limitations [iii]–[v], [vii]–[ix], and [xi]—entail
using a computer to model and analyze the accuracy of software code. But
the acts of modeling and analyzing software code merely constitute the
underlying abstract ideas—the mental processes that can be performed in the
human mind or with pencil and paper. See BSG Tech LLC v. Buyseasons,
Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It has been clear since Alice
that a claimed invention’s use of the ineligible concept to which it is directed
cannot supply the inventive concept that renders the invention ‘significantly
more’ than that ineligible concept.”); Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new abstract
idea is still an abstract idea.”) (emphasis omitted); SAP Am., Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (“What is needed is an
inventive concept in the non-abstract application realm.”).
Appellant’s arguments confirm that the claimed invention is directed
to the underlying abstract idea (the particular mental steps for testing
software code), as opposed to an in improvement in a computer or
technology: “Appellant’s claims employ ‘rules’—a ‘specific means or
method’—that enable a ‘technological improvement over the existing,
manual . . . techniques’ performed by existing prior art systems.” Appeal
Br. 29 (emphasis added) (underlining omitted).
Appellant also argues that Enfish, LLC v. Microsoft Corp., 822 F.3d
1327 (Fed. Cir. 2016) supports their position that “Appellant’s claims are
focused on specific and narrowly-defined systems and methods [that] . . .
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focus ‘on an improvement to computer functionality itself,’ rather than on
achieving the abstract idea.[]” Appeal Br. 32 (underlining omitted) (citing
Enfish, 822 F.3d at 1336). According to Appellant, “Appellant’s claims
recite specific features describing a distinct process related to solving
problems rooted in computerized automated software performance testing
techniques.” Id. (citing Spec. ¶¶ 4–6, 25–48).
Appellant’s arguments are unpersuasive. Appellant’s allegedly
“distinct process” merely entails automating the kind of computer-code
testing or debugging that previously was performed manually. But “mere
automation of manual processes using generic computers does not constitute
a patentable improvement in computer technology.” Credit Acceptance
Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017); see also
DDR Holdings, LLC v. Hotels.com., L.P., 773 F.3d 1245, 1257 (Fed.
Cir. 2014) (distinguishing a claimed solution necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks from claims that “merely recite the performance of
some business practice known from the pre-Internet world along with the
requirement to perform it on the Internet”); OIP Techs., Inc. v. Amazon.com,
Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (relying on a “processor” to
“perform routine tasks more quickly or more accurately is insufficient to
render a claim patent eligible”). Bancorp Servs., L.L.C. v. Sun Life
Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he
fact that the required calculations could be performed more efficiently via a
computer does not materially alter the patent eligibility of the claimed
subject matter.”).
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For these reasons, Appellant does not persuade us that claim 1 is
directed to an improvement in the functioning of a computer or to any other
technology or technical field. MPEP § 2106.05(a). Nor is claim 1 directed
to a particular machine or transformation. MPEP §§ 2106.05(b), (c). Nor
has Appellant persuasively demonstrated that claim 1 adds any other
meaningful limitations for purposes of the analysis under Section 101.
MPEP § 2106.05(e). Accordingly, Appellant has not persuaded us that
claim 1 integrates the recited abstract ideas into a practical application
within the meaning of the 2019 Guidance. 2019 Guidance, 84 Fed. Reg. at
52–55.
STEP 2B:
Under step 2B of the 2019 Guidance, we next analyze whether
claim 1 adds any specific limitations beyond the judicial exception that,
either alone or as an ordered combination, amount to more than “well-
understood, routine, conventional” activity in the field. 2019 Guidance,
84 Fed. Reg. at 56; MPEP § 2106.05(d).
In the present case, Appellant acknowledges that software for
modeling computer code with directed acyclic graphs was conventional.
Spec. ¶ 32 (“There are multiple modeling designs and tools, such as the
entity-relationship model (ERM), Unified Modeling Language (UML),
directed acyclic graph (DAG), transaction flows, activity diagrams, and the
like. As disclosed herein, modeling and testing tool 170 may model the
requirements of a software using a DAG design.”).
Appellant also acknowledges, as noted above, that the additional
computer elements being used for carrying out the abstract mental rules for
testing the computer code were well-understood, routine, and conventional.
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Appeal Br. 29 (“Appellant’s claims employ ‘rules’—a ‘specific means or
method’—that enable a ‘technological improvement over the existing,
manual . . . techniques’ performed by existing prior art systems.”) (emphasis
added) (underlining omitted).
Additionally, we have analyzed the steps of claim 1 together and
determine that, when considered as an ordered combination, they do not add
anything of significance to the eligibility analysis as compared to
considering the limitations individually.
For these reasons, we determine that claim 1 does not recite additional
elements that, either alone or as an ordered combination, amount to
significantly more than the judicial exception within the meaning of the
2019 Guidance. 2019 Guidance, 84 Fed. Reg. at 52–55; MPEP
§ 2106.05(d).
Accordingly, we sustain the Examiner’s rejection of claim 1 under
35 U.S.C. § 101 as being directed to an exception to patent-eligible subject
matter without reciting significantly more. We, likewise, sustain the section
101 rejection of claims 2–23, which Appellant does not argue separately.
Appeal Br. 13–39.

THE SECTION 103(a) REJECTION
The Grounds of Rejection
Claims 1–23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Berenbach, Gehlot, Nehab, and Chilenski, as detailed in
the following table. Final Act. 8–15.
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Name Reference Date
Gehlot US 6,353,806 B1 Mar. 5, 2002
Nehab US 2004/0103396 A1 May 27, 2004
Berenbach US 2005/0076328 A1 Apr. 7, 2005
Chilenski et al., Applicability of modified condition/design coverage to
software testing, Software Engineering Journal, 193–200, Sept. 1994.

The Examiner finds that Berenbach discloses a computer-
implemented method for automated software performance testing, a
modeling tool, and a client system that comprises generating test cases for
nodes, as well as verifying the overall system. Final Act. 8–9.
The Examiner finds that Gehlot teaches an analogous modeling
system that is performed by a processor hosted on a server and connected via
a network connection to at least one networked database. Final Act. 9.
According to the Examiner, Gehlot additionally teaches the step of
“receiving, via a graphical user interface, a selection of one or more portions
of previously[]created models.” Id. at 9–10. The Examiner determines that
motivation existed to combine the teachings of these two references. Id.
at 10.
The Examiner finds that Nehab teaches an analogous system that
includes the following functionalities: (1) “selecting, using an algorithm
based on the tree graph model, a test path for traversing the tree graph
model”; (2) “storing one or more expected outcomes from traversing the
selected test path”; and (3) “retrieving the one or more expected outcomes.”
Final Act. 11. The Examiner further finds that Nehab teaches “generating
one or more test outcomes by traversing the entire selected test path using
the generated data values; [and] comparing the one or more test outcomes to
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the one or more expected outcomes at multiple intermediate verification
points along the selected test path.” Id.
The Examiner finds that Berenbach in combination with Nehab
discloses “generating, using an algorithm and based on the selected test path,
one or more data values for test cases, wherein the data values are generated
to traverse one or more branches of the selected test path for the software
without bugs or errors.” Final Act. 11.
The Examiner determines that one of ordinary skill would have been
motivated to combine the teachings of Berenbach and Nehab because
“applying the known technique would have yielded predictable results.”
Final Act. 12. The Examiner further reasons that “Berenbach already
discloses testing behavior and comparing to expected or desired behaviors[,
and as such,] . . . the substitution of techniques would have resulted in
predictable results.” Id.
The Examiner further finds that Chilenski teaches “verifying that the
tree graph model provides complete path coverage for the modeling
requirements, by determining whether predicate and clause coverage criteria
of the tree graph model yield[] n+1 truth values, wherein n is a number of
clauses in a predicate of a logical expression in the tree graph model.” Final
Act. 12.
The Examiner determines that testing a system according to the
combination of Berenbach, Gehlot, and Nehab in this manner would have
been predictable because the cited prior art already performs testing, so
testing the prior art’s system in this manner would test all possible scenarios,
and, thereby, avoid the possibility of accidentally missing possible bugs.
Final Act. 12–13.
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Appellant presents four arguments in its principal brief. Appeal
Br. 29–46. We address these arguments seriatim.
Contentions and Analysis
(I)
Appellant argues that Gehlot does not disclose “generating, using the
modeling tool, a tree graph model based on the modeling requirements and
the one or more user-selected portions of previously-created models.”
Appeal Br. 40. According to Appellant, “Gehlot ‘relates generally to
hardware simulation and more specifically to the automation of hardware
simulation using symbolic models.’” Id. at 41 (citing Gehlot col. 1, ll. 5–7).
Appellant argues that at best, Gehlot “discloses that symbolic model
symbols can be cut and pasted on the graphic display, resulting in automatic
updating of the interconnection list[,] and that the user can store and later
recall for use the symbolic model symbol.” Appeal Br. 42. Appellant
further argues that Gehlot, however, “does not disclose generating a tree
graph model, let alone ‘generating, using the modeling tool, a tree graph
model based on the modeling requirements and the one or more user-
selected portions of previously-created models,’” as claimed. Id. Appellant
further argues that neither Nehab nor Chilenski cure this deficiency. Id.
The Examiner finds, and we agree, that this argument is unpersuasive
because Appellant’s arguments do not address the rejection, as set forth in
the Final Action. Ans. 9. As the Examiner explains, Gehlot was used only
to teach the portion of the claim limitation relating to “receiving, via a
graphical user interface, a selection of one or more portions of previously-
created models,” but that the remainder of the claim limitation was taught by
the combination of Berenbach and Gehlot. Id. (citing Final Act. 10).
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Because Appellant’s arguments are not directed to the combination of
Berenbach and Gehlot, they do not persuade us of error in the Examiner’s
obviousness rejection.
(II)
Appellant argues that “Berenbach does not disclose ‘generating one or
more data values that cause the processor to traverse one or more branches
of the selected test path for the software without bugs or errors.’” Appeal
Br. 42 (emphasis omitted). According to Appellant,
Berenbach, at most, discloses that creating a tree comprises
(1) traversing a directed graph beginning with a root use case,
and (2) creating a relationship use case node corresponding to a
next use case. However, Berenbach does not disclose using an
algorithm to generate one or more data values, let alone
“generating, using an algorithm and based on the selected test
path, one or more data values that cause the processor to traverse
one or more branches of the selected test path for the software
without bugs or errors,” (emphases added)[,] as recited in
amended claim 1.
Id. at 43 (some underlining omitted).
Appellant’s arguments do not persuade us of error. As noted by the
Examiner (Ans. 10), the rejection relied upon the combination of Berenbach
and Nehab for teaching this limitation—not Berenbach alone. Id.; see also
Final Act. 11 (explaining that Nehab teaches generating data values for test
cases in order to traverse one or more branches of the selected test path).
Appellant does not present arguments in this section of the Appeal Brief
regarding Nehab, as opposed to Berenbach. Appeal Br. 42.
(III)
Appellant argues “[t]he Examiner’s interpretation of ‘travers[ing] the
selected test path for the software without bugs or error’ as the software
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having ‘expected outcomes’ is clearly erroneous.” Appeal Br. 43 (emphasis
omitted). Appellant cites to a passage of Appellant’s Specification as
evidence that “the expected outcome may differ from the outcome received
from [a] sensitize[d] test path.” Id. at 43–44 (citing Spec. 48). Appellant
further argues that the Specification indicates that “a test path may be
sensitized by inputting specific data values that would cause the software to
do the equivalent of traversing the selected path if there were no bugs or
errors in the path.” Appeal Br. 44.
The Examiner responds that the cited portion of the Specification
neither appears in claim 1, nor expressly defines or further narrows the
traversal limitation. Ans. 10–11. We agree. As such, Appellant’s argument
does not persuade of error because the argument is not commensurate in
scope with the language of the disputed claim.
(IV)
Finally, Appellant argues that “Nehab fails to cure the deficiencies of
Berenbach because Nehab, at most, discloses comparison of expected results
of test runs against actual results and adjustment to the test in order to
increase actual coverage of the complete set of all tests.” Appeal Br. 44
(emphasis omitted). More specifically, Appellant argues that
Nehab, at best, discloses determining expected results using a
description of a business process as a plurality of states,
executing the state machine to determine expected results,
comparing the expected results to actual test results from test
runs, calculating actual coverage of tests in a set, and managing
the tests by making adjustment to the tests in order to increase
coverage.
Id. at 45. Appellant contends that
nowhere does Nehab disclose or suggest “generating, using an
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algorithm and based on the selected test path, one or more data
values that cause the processor to traverse one or more branches
of the selected test path for the software without bugs or errors,”
(emphases added)[,] as required by amended claim 1.
Id. at 45–46 (some underlining omitted).
The Examiner responds that Appellant’s argument is directed to the
teachings of Nehab alone, but that the rejection is based on the teachings of
Berenbach and Nebab, as combined,—not on the teachings of either
reference alone. Ans. 11 (discussing the teachings of Berenbach that the
Examiner additionally relies upon).
For the reasons set forth by the Examiner, we agree that Appellant’s
arguments are unpersuasive of error.
(V)
In the Reply Brief, Appellant newly argues that the obviousness
rejection should be reversed because “neither the [Final] Action nor the
Examiner’s Answer sets forth a clearly articulated basis explaining why it
would have been obvious to combine the [four] cited references.” Reply
Br. 14.
We do not see this argument presented earlier in the Appeal Brief, and
Appellant has not explained what good cause there might be to consider this
newly raised arguments. See Reply Br. 14. Accordingly, we decline to
consider this belated argument and, instead, affirm the Examiner’s
obviousness rejection of claims 1–23 for the all of the reasons articulated
above. See Ex parte Borden, 93 USPQ2d 1473 (BPAI 2010) (informative)
(“[C]onclud[ing] that the regulations set out in 37 C.F.R. § 41, Practice
Before the Board of Patent Appeals and Interferences, do not require the
Board to consider such belated arguments”).
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CONCLUSION

TIME PERIOD FOR RESPONSE
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1–23 101 Eligibility 1–23
1–23 103(a) Berenbach,
Gehlot, Nehab,
Chilenski
1–23
Overall
Outcome
1–23