Ex Parte Dresser et al

Patent Trial and Appeal BoardMar 24, 2014

11019407 (P.T.A.B. Mar. 24, 2014)

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. 11/019,407 12/22/2004 Daniel Dresser SVL920040104US1 4520 64612 7590 03/25/2014 OHLANDT, GREELEY, RUGGIERO & PERLE, L.L.P. IBM SAN JOSE 1 LANDMARK SQUARE 10TH FLOOR STEMFORD, CT 06901 EXAMINER NAHAR, QAMRUN ART UNIT PAPER NUMBER 2198 MAIL DATE DELIVERY MODE 03/25/2014 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 DANIEL DRESSER and SUJA VISWESAN ___________ Appeal 2011-010678 Application 11/019,407 Technology Center 2100 ____________ Before JEFFREY S. SMITH, DANIEL N. FISHMAN, and CATHERINE SHIANG, Administrative Patent Judges. FISHMAN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-010678 Application 11/019,407 2 This is an appeal under 35 U.S.C. § 134(a) of the final rejection claims 9-28. Claims 1-8 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE THE INVENTION Appellants’ invention “relates to a system and apparatus for running tests on software, and more particularly, to a system and apparatus for automatically configuring software based on test requests.” Spec. 1:7-9. Claim 9, reproduced below, is illustrative with disputed limitation sin italics: 9. A system, comprising: (I) a first processor that: (a) receives a request to run a test of a software product; (b) determines a test case for said software product, based on said request; and (c) communicates with a resource to load said software product into said resource, automatically configure said software product for said test case, and load a test module into said resource for said test case; and (II) a second processor that: (a) receives said request to run said test from said first processor, and (b) runs said test on said software product. Appeal 2011-010678 Application 11/019,407 3 THE REJECTIONS Claims 9-28 are rejected under 35 U.S.C. § 103(a) as unpatentable over Haswell (US 6,907,546 B1) and Liese (US 5,854,889). THE CONTENTIONS Rather than repeat all arguments here, we refer to Appellants’ Appeal Brief (“App. Br.” filed December 2, 2010), Appellants’ Reply Brief (“Reply Br.” filed April 18, 2011), and the Examiner’s Answer (“Ans.” mailed February 16, 2011) for the respective positions of Appellants and the Examiner. Only those arguments actually made by Appellants have been considered in this decision. Arguments that Appellants did not make in the briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii). Appellants assert that all claims stand or fall with claim 9 (App. Br. 9, 13) and we, therefore, direct our decision to claim 9. In rejecting independent apparatus claim 9, the Examiner finds Haswell teaches all recited elements but “does not explicitly teach (b) determines a test case for said software product, based on said request or automatically configure said software product for said test” as recited in the claim. Ans. 3-5. The Examiner further finds Liese teaches these features and articulates a reason for combining the references to teach or suggest all elements of claim 9. Ans. 5-6. Appellants contend the Examiner erred because Liese “does not describe a processor that (i) determines a test case for the software product, based on the request, or (ii) automatically configure the software product for the test, as recited in claim 9.” App. Br. 10. Appeal 2011-010678 Application 11/019,407 4 ISSUE Appellants’ arguments present us with the following issue: Has the Examiner erred in finding that the combination of Haswell and Liese teaches or suggests a first processor that “determines a test case for said software product, based on said request” and that “communicates with a resource to . . . automatically configure said software product for said test case” as recited in claim 9? ANALYSIS Appellants cite and quote a number of portions of Liese (App. Br. 10- 11) and conclude from these portions “the user determines the test case, and therefore, the Liese et al. patent neither discloses nor suggests that a processor determines a test case for the software product (that is being tested).” App. Br. 11; see also Reply Br. 2-4. In like manner, Appellants cite and quote other portions of Liese and conclude: However, none of the several passages quoted above describes configuring a software product that is being tested, and other than in the several passages quoted above, the Liese et al. patent does not further mention configuration. Therefore, the Liese et al. patent does not disclose or suggest a processor to automatically configure said software product (that is being tested) for said test case . . . . App. Br. 12. We are not persuaded. First, we observe that Appellants’ argument improperly attacks teachings of Liese alone while the rejection is based on the combination of references. “But one cannot show non-obviousness by attacking references individually where, as here, the rejections are based on Appeal 2011-010678 Application 11/019,407 5 combinations of references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). The Examiner’s rejection relies on Haswell for teaching automated software testing tools including first and second processors to load a software product to be tested and to execute a selected test of the software product responsive to a received request. Ans. 3-5. The Examiner relies on Liese to teach automated determination of a test to be executed and to teach automated configuration of the software product. Ans. 5. Thus, the Examiner finds the combination of Haswell and Liese teaches all elements of the claims. The Examiner explains with respect to teachings of Liese: Execution server is interpreted as the processor. The execution server determines which test case to send to which custom server based on the requested test(s). The custom server is interpreted as the software product. Even though a user requests a test, the execution server determines which test case to send to which custom server based on the requested test(s); that is requested by user. The cited claims do not detail how the processor performs the act of determining, i.e. based on the user selection. Hence the processor has received the user's selection and determined the next course of action of configuring the identified / determined test case to a software product. Ans. 10 (emphasis added). In other words, the claims do not preclude a preliminary, additional step in which a user selects a test to be run and then a subsequent automated step selects a custom server to perform the test based on the user’s selection. The Examiner reasonably interprets the selected custom server as the software product to be tested. Thus, in combination with the Examiner’s findings regarding the recited first and second processors as taught by Haswell, Liese teaches or suggests the execution processor of Liese determines (based on a user’s selection) which test case is to be sent to which custom server. In combination with the teachings of Appeal 2011-010678 Application 11/019,407 6 Haswell regarding other functions of the recited first processor, we agree with the Examiner that Haswell and Liese, in combination, teach or reasonably suggest a first processor that “determines a test case for said software product.” In like manner, the Examiner relies on Liese, in combination with Haswell, to teach automatically configuring the software product by pre-allocating resources for certain types of tests. Ans. 10-11 (citing Liese 4:11-18, 4:29-45). The Examiner explains: As previously pointed out in the Examiner's Response (1) above, execution server is interpreted as the processor; and custom server is interpreted as the software product. A custom server is an available resource. The execution server configures the available resource (custom server). The execution server automatically configures the custom server for the test case. Ans. 11. We agree. The Examiner’s mapping of the claim elements to the teachings of Liese is reasonable and, in combination with Haswell, teaches or reasonably suggests the automated configuration limitation of the claims. Appellants’ arguments (App. Br. 12; Reply Br. 2-4) similarly attack the teachings of Liese alone while the rejection is based on the combination of Haswell and Liese. In view of the above discussion, we are not persuaded that he Examiner erred by finding that the combination of Haswell and Liese teaches or suggests a first processor that “determines a test case for said software product, based on said request” and that “communicates with a resource to . . . automatically configure said software product for said test case” as recited in claim 9. Appeal 2011-010678 Application 11/019,407 7 DECISION For the above reasons, the rejection of claims 9-28 under 35 U.S.C. § 103 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 msc