Ex Parte Luke

Patent Trial and Appeal Board

Apr 25, 2016

12828269 (P.T.A.B. Apr. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/828,269 06/30/2010
46321 7590 04/27/2016
CRGOLAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
FIRST NAMED INVENTOR
Monica Luke
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.
CAM920100022US1 (042) 6510
EXAMINER
LIU, CHIA-YI
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
04/27/2016 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):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MONICA LUKE
Appeal2013-009543 1
Application 12/828,2692
Technology Center 3600
Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-11. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Our decision references Appellant's Appeal Brief ("App. Br.," filed
Mar. 18, 2013) and Reply Brief ("Reply Br.," filed July 22, 2013), and the
Examiner's Answer ("Ans.," mailed June 5, 2013) and Final Office Action
("Final Act.," mailed Nov. 20, 2012).
2 Appellant identifies International Business Machines Corporation as the
real party in interest. App. Br. 2.
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Application 12/828,269
CLAIMED INVENTION
Appellant's claimed invention "relates to software test automation and
more particularly to [a] return on invention (ROI) calculation for the use of
test automation for an application under test." Spec. i-f 1.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A method for dynamic computation of return on
investment (ROI) for test automation, the method comprising:
storing a development cost for an automated test tool
configured to test an application under test, and also a cost of
manually executing a test case for the application under test;
repeatedly executing the automated test tool for the
application under test;
computing in a dynamic ROI calculator executing in
memory by at least one processor of a computer, a running ROI
as a difference between a number of executions of the automated
test tool multiplied by the cost of manually executing the test
case for the application under test and the development cost of
the automated test tool and the difference divided by the
development cost; and,
displaying the running ROI.
REJECTIONS
Claims 8-11 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 1-11 are rejected under 35 U.S.C. § 112, second paragraph, as
indefinite for failing to particularly point out and distinctly claim the subject
matter that Appellant regards as the invention.
Claims 1--4 and 8-11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Douglas Hoffman, Cost Benefits Analysis of Test
Automation, Software Quality Methods, LLC., STARW, 1-14 (1999)
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Application 12/828,269
(hereinafter "Hoffman"), Michael Kelly, The ROI of Test Automation, paper
presented at STAREAST (2004), available at
http://www.stickyminds.com/sitewide.asp?Objectld=8502&Function=DET
AILBROWSE&ObjectType=ART (last visited Feb. 27, 2012) (hereinafter
"Kelly"), and Keshel (US 2003/0144873 Al, pub. July 31, 2003).
Claims 5-7 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Hoffman, Kelly, Keshel, and Adiyapatham (US 2010/0229155 Al, pub.
Sept. 9, 2010).
ANALYSIS
Non-Statutory Subject Matter
We are not persuaded by Appellant's argument that the Examiner
erred in rejecting claims 8-11under35 U.S.C. § 101. Instead, we agree
with the Examiner that, under a broadest reasonable interpretation,
independent claim 8 covers transitory propagating signals, which are non-
statutory subject matter. Final Act. 2 ("the [computer readable storage]
medium can be [a] propagation medium" (citing Spec. i-f 21)); see also
Ans. 12-13 (citing Spec. i-fi-120-21).
Appellant argues that the Examiner failed to consider that paragraph
20 of Appellant's Specification "clearly distinguishes between a computer
readable signal medium and a computer readable storage medium." App.
Br. 5; see also Reply Br. 2--4. Appellant's Specification at paragraph 20
provides non-limiting examples of the term "computer readable storage
medium." But we find nothing that limits the term "computer readable
storage medium" to a non-transitory embodiment. To the contrary, the
Specification at paragraph 20 explicitly discloses that a non-exhaustive list
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Application 12/828,269
of the computer readable storage medium includes "an electrical connection
having one or more wires [and] an optical fiber," i.e., physical but transitory
forms of signal transmission. See In re Nuljen, 500 F.3d 1346, 1353 (Fed.
Cir. 2007) (holding "physical but transitory forms of signal transmission
such as ... electrical signals through a wire, and light pulses through a fiber-
optic cable" are not statutory subject matter); see also Ex parte Mewherter,
107 USPQ2d 1857, 1862 (PTAB 2013) (precedential) (finding a machine
readable storage medium non-statutory under § 101 ).
Because Appellant's Specification does not define "computer readable
storage medium" to exclude a transitory embodiment, the claimed
"computer readable storage medium," under a broadest reasonable
interpretation, encompasses transitory signals, which are not patent-eligible.
Therefore, we sustain the Examiner's rejection of claims 8-11 under
35 U.S.C. § 101.
Indefiniteness
In rejecting claims 1-11 under 35 U.S.C. § 112, second paragraph, the
Examiner finds that the phrase "running ROI," as recited in independent
claims 1, 5, and 8, is vague. Referring to claim 4, which depends from
claim 1 and recites "displaying the running ROI comprises printing a report
of the ROI," the Examiner finds that it is unclear whether: "1) [a running
ROI is defined as] a difference between a number of executions[;] 2) there is
more than one ROI[;] 3) the ROI is shown on a computer[;] or 4) [the] ROI
is being printed." Final Act. 3.
The Examiner explains that a "running" ROI suggests that "there are
multiple ROis continuously being calculated," but independent claims 1, 5,
and 8 each recites "a (one) difference." Ans. 13. The Examiner finds "it is
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Application 12/828,269
unclear how just one single difference is considered a "running ROI", or
how a "static (not running)," printed report, as recited in claim 4, could
constitute a "running ROI." Ans. 13-14.
The Examiner further explains that the definition for running ROI, as
recited in independent claims 1, 5, and 8, is subject to two interpretations:
1) running ROI= [(number of executions of the automated test tool)-(cost
of manually executing the test case x development cost)]/development cost,
or 2) running ROI= [(number of executions of the automated test tool)-
( cost of manually executing the test case] - development cost)]/ development
cost. Final Act. 2-3; see also Ans. 13.
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether a person skilled in the art would understand what is claimed when
the claim is read in light of the specification. Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986).
Here, we agree with Appellant that a person of ordinary skill in the art
would understand what is encompassed by "running ROI," as recited in
independent claims 1, 5, and 8, when the claims are read in light of the
Specification. Claim 1, for example, recites that the running ROI is "a
difference between a number of executions of the automated test tool
multiplied by the cost of manually executing the test case for the application
under test and the development cost of the automated test tool and the
difference divided by the development cost," i.e., running ROI= [((number
of executions of the automated test tool) x (cost of manually executing the
test case)) - (development cost)]/ development cost.
Likewise, Appellant's Specification describes that ROI= [n*X-
Y]/Y, where n is the number of uses of the automated tool, Xis the cost of
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manual execution, and Y is the cost of development. See Spec. iii! 15, 18,
Fig. 1. Appellant's Specification describes at paragraphs 15 and 18 that the
running ROI is computed by the ROI calculator and presented whenever the
automated test tool performs an automated test. As a result, the running ROI
shows a favorable impact with repeated use of the tool. Spec. if 15. In other
words, the running ROI is a calculation performed when the automated test
tool is used and a result of the calculation changes (i.e., improves) with
continued use of the tool.
On the record before us, we find that the Examiner erred in
determining that the phrase "running ROI" renders independent claims 1, 5,
and 8, and the claims depending therefrom, indefinite.
The Examiner also finds the phrase "dynamic ROI calculator," as
recited in independent claims 1, 5, and 8, is unclear whether the ROI or the
calculator is dynamic. Final Act. 3. Specifically, the Examiner finds that
the term "dynamic" means "energetic, forceful," which is a relative or
subjective term, rendering the claims indefinite. Id.
However, as noted by Appellant, another generally understood
meaning for the term "dynamic" is "marked by usually continuous and
productive activity or change." App. Br. 8 (citing www.merriam-
webster.com/dictinary/dynamic). Consistent with the definition provided by
Appellant, Appellant's Specification describes that the ROI calculator
computes a running ROI that changes with continued use of the automated
test tool. Spec. if 15. We agree with Appellant that one of ordinary skill
would understand from the claim language, when read in light of the
Specification, that a "dynamic ROI calculator" calculates a running ROI that
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changes with the number of executions or uses of the automated test tool.
App. Br. 8-9.
In view of the foregoing, we do not sustain the Examiner's rejection
of independent claims 1, 5, and 8, and the claims depending therefrom,
under 35 U.S.C. § 112, second paragraph.
Obviousness
We are persuaded by Appellant's argument that the Examiner erred in
rejecting independent claims 1, 5, and 8, because the combination of
Hoffman and Kelly does not disclose or suggest "computing ... a running
ROI as a difference between a number of executions of the automated test
tool multiplied by the cost of manually executing the test case for the
application under test and the development cost of the automated test tool
and the difference divided by the development cost," as recited in
independent claim 1 and similarly recited in independent claims 5 and 8.
App. Br. 10-14; see also Reply Br. 7-10.
Kelly describes a return on investment for test automation is
calculated by dividing the net benefits of automation by the cost of
automation. Kelly 2. A net benefit from automating testing is calculated as
a difference (or savings) between performing automated testing and manual
testing over a period of time (e.g., cost of manual - cost of automation). See
id. at 2-3. Thus, ROI= (cost of manual- cost of automation)/cost of
automation. Id. at 3.
Further, a cost of automation = price of hardware + price of software
+ time to develop scripts + (time to maintain scripts x number of times
scripts are executed)+ (time to execute scripts x number of times scripts are
executed). Id. at 3. And a cost of manual= time to develop test cases+
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(time to maintain test cases x number of times tests are executed) + (time to
execute manual testing x number of times tests are executed). Id. The cost
of manual and cost of automation equations, thus, can be used to derive ROI.
Id. But Kelly cautions that this approach is flawed due to incorrect
assumptions, including that automated testing cannot be compared with
manual testing. Id. at 3--4.
In rejecting independent claims 1, 5, and 8, the Examiner finds that
Kelly at page 3 discloses that ROI = (cost of manual - cost of
automation)/ cost of automation, where cost of manual = (cost to execute
manual testing) x (a number of times manual tests are executed), and cost of
automated= development of the automated test tool. Ans. 14--15. The
Examiner acknowledges that Kelly does not disclose that cost of manual =
(cost to execute manual testing) x (a number of times automated tests are
executed), and relies on Hoffman to cure the deficiency. Id. Specifically,
the Examiner concludes that it would have been obvious to modify Kelly's
cost of manual by replacing a number of times manual tests are executed
with a number of times automated tests are run, because Hoffman discloses
"creating and running a manual test with the same number of runs [as] an
automated test."3 Id. at 14.
The difficulty with the Examiner's analysis is that Hoffman does not
disclose running a manual test with the same number of runs as an
automated test. Rather, equation 1, as disclosed by Hoffman, is an
3 Although the final rejection of independent claim 5 does not set forth any
rationale for the proposed modification (see Final Act. 8), the Answer
clarifies that the rationale is the same for each of independent claims 1, 5,
and 8. See Ans. 14--15.
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efficiency ratio (En) of automated costs over manual costs that can be
calculated when the same number of developed tests are run the same
number of times. See Hoffman 8-9. As noted by Appellant (see App.
Br. 13-14; see also Reply Br. 9-10), Hoffman expressly discloses that
equation (1) is "based upon several assumptions that aren't true for most
organizations," including that "[m]ost often, manual and automated tests are
not run the same number of times." Hoffman 10. Thus, it is not readily
apparent why one of ordinary skill in the art would have been motivated to
replace a number of manual tests with a number of automated tests in the
cost of manual equation, as proposed by the Examiner.
Further, it also is not readily apparent, why one of ordinary skill
would have modified equations for a cost of manual testing and a cost of
automated testing, as disclosed by Kelly, in the manner proposed by the
Examiner to result in Appellant's invention. For example, the proposed
modification to Kelly's cost of automation equation involves removing five
cost factors (i.e., a price of hardware, a price of software, a time to maintain
scripts, and a number of times scripts), two operations of addition, and one
operation of multiplication. Similarly, the proposed modification to the cost
of manual equation involves removing two factors (i.e., time to develop test
cases and time to maintain test cases), two operations of addition, and one
operation of multiplication.
On the present record, we conclude that the Examiner has not
established a prima facie case of unpatentability. Therefore, we do not
sustain the Examiner's rejections of independent claims 1, 5, and 8, and
claims 2--4, 6, 7, and 9-11, which depend therefrom, under 35 U.S.C.
§ 103(a).
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DECISION
The Examiner's rejection of claims 8-11under35 U.S.C. § 101 is
affirmed.
The Examiner's rejection of claims 1-11 under 35 U.S.C. § 112,
second paragraph is reversed.
The Examiner's rejections of claims 1-11 under 35 U.S.C. § 103(a)
are reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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