Ex Parte Reeves

Patent Trial and Appeal Board

Jan 7, 2014

10795528 (P.T.A.B. Jan. 7, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte SIMON J. REEVES
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Appeal 2011-000728
Application 10/795,528
Technology Center 2800
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Before JOSEPH F. RUGGIERO, MICHAEL J. STRAUSS, and
DANIEL N. FISHMAN, Administrative Patent Judges.

FISHMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-000728
Application 10/795,528

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This is an appeal under 35 U.S.C. § 134(a) of the final rejection
claims 1-5 and 7-23. App. Br. 5. Claim 6 is cancelled. Id. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
THE INVENTION
Appellant’s invention relates to a recording system and method that
continuously records user actions and displayed images on a computer
system. See generally Spec. 1.
Claim 1, reproduced below, is illustrative:
1. A method of recording user input and displayed
images, comprising:
continuously capturing one or more events comprising
user input, displayed images, or a combination thereof from one
or more devices associated with a computer;
recording the captured events in a file;
maintaining the file according to a predetermined
configuration;
overwriting the captured events in the file with one or
more newly captured events according to the predetermined
configuration;
allowing the captured events or the newly captured
events to be replayed using the file;
wherein the predetermined configuration includes a size
of the file, a duration for keeping the recorded events in the file,
or a combination thereof.
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THE REJECTIONS1
Claims 1-5, 7, 9, 10, and 12-23 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Pope (US 5,335,342) and Kahn (US 2001/0050875
A1). Ans. 3-9.
Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Pope, Kahn, and Chen (US 5,684,945). Ans. 9-10.
Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Pope, Kahn, and Nocera (US 2006/0200773 A1). Ans. 10.
Only those arguments actually made by Appellant have been
considered in this decision. Arguments that Appellant did not make in the
Appeal Brief have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii) (2011).

REJECTION OVER POPE AND KAHN
Claims 1-4, 7, 9, 10, 12-15, 17-19, 22, and 23
Issues
Appellant’s arguments regarding claim 1 present us with the
following issues:
1. Has the Examiner erred by combining Kahn with Pope because the
combination renders Pope unsatisfactory for its intended purpose
or changes Pope’s principles of operation?
2. Has the Examiner erred by finding that the combination of Pope
and Kahn teaches or suggests “wherein the predetermined

1 The Examiner objected to claim 23 (Fin. Rej. 2). The Examiner did not
repeat the objection in the Answer and Appellant does not address the
objection in the Briefs. Regardless, this is a petitionable issue and thus the
objection is not before us in this appeal.
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configuration includes a size of the file, a duration for keeping the
recorded events in the file, or a combination thereof” as recited in
claim 1?

Analysis
Issue 1
Appellant argues that the Examiner’s combination of Kahn with Pope
renders Pope unsatisfactory for its intended purpose. App. Br. 13-16. More
specifically, Appellant argues that:
modifying the ASTS [Automated Software Test System] of
Pope to include the alleged automatic overwriting feature of
Kahn identified by the Examiner in Paragraph [0138] would
render Pope unsatisfactory for its intended purpose because
such functionality would automatically overwrite a portion of
the test data intended to be included in a particular capture
session, or used for comparison, thereby resulting in an
incomplete collection of test data.
App. Br. 15; see also Reply Br. 3. We are unpersuaded.
The Examiner finds that Pope teaches capturing events in a system
under test, storing the captured events in a file, and replaying the events to
test a software system under test. Ans. 3-4. The stored events include all
user input as well as captured screen images representing output of the
software system under test. Pope, col. 2, ll. 3-13. The stored events are
replayed to compare results of running different versions of the software
system under test. See, e.g., Pope Abstract. Thus, the purpose of Pope is to
automate testing of a software system by capturing events, replaying the
events on runs of versions of the software, and to compare results of the
various runs of the software system under test. The Examiner further finds
that Pope teaches that “the originally stored images captured during the
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previous execution are replaced with new images each time a difference in
the image is detected (see Pope col. 7, lines 36-42)” and thus concludes that
Pope teaches overwriting captured events (e.g., screen images) with newly
captured events. Ans. 11. The Examiner explains that Kahn is combined
with Pope to teach that the overwriting of events writes “in the file . . .
according to the predetermined configuration.” Id. In other words, Pope
teaches overwriting of screen images and the Examiner relies on Kahn only
for the limited teachings of overwriting “in the file . . . according to the
predetermined configuration.” Therefore, overwriting is performed
replacing a screen image portion of the test with a new screen image for the
test such that, contrary to Appellant’s assertion and absent sufficient
evidence or argument to the contrary, there is no resultant incomplete
collection of test data. Accordingly, we agree with the Examiner and find
that Appellant has failed to persuade us that combining Kahn with Pope
would render Pope unsatisfactory for its intended purpose.
Further clarifying the Examiner’s position, bodily incorporation of the
combined references is not necessary in an obviousness rejection. See In re
Keller, 642 F.2d 413, 425 (CCPA 1981). Thus, we find that the Examiner's
proposed combination of Pope and Kahn predictably uses prior art elements
according to their established functions—an obvious improvement. KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). “[T]he [Examiner’s]
analysis need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
KSR, at 418.
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Appellant further argues for the first time in the Reply Brief that the
Examiner’s combination changes the principles of operation of Pope. Reply
Br. 3-5. This argument was not presented in the Appeal Brief. Absent good
cause, arguments raised in a Reply Brief that could have been raised in an
Appeal Brief need not be considered and are treated as waived. See Ex parte
Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (“informative”). Regardless,
we have reviewed this argument by Appellant and, for the same reasons as
above, we are unpersuaded that the proposed combination of Kahn with
Pope changes the principles of operation of Pope. “What appellants
overlook is that it is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review.” In re
Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (citations omitted) (emphasis
added); see also In re Nievelt, 482 F.2d 965, 968 (CCPA 1973)
(“[c]ombining the teachings of references does not involve an ability to
combine their specific structures.”).
In view of the above discussion and on the preponderance of the
evidence, we are not persuaded that the Examiner erred by combining Kahn
with Pope because the combination renders Pope unsatisfactory for its
intended purpose or changes Pope’s principles of operation.

Issue 2
Appellant argues: “the alleged predetermined configuration identified
by the Examiner refers to setting the resolution of an image to be stored in a
file, not to a configuration of the file itself.” App. Br. 17. Appellant
contends that “merely ‘setting the size’ of an image that will be stored in a
file does not disclose, teach, or suggest a predetermined configuration that
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‘includes a size of the file, a duration for keeping the recorded events in the
file, or a combination thereof’ as recited in Claim 1.” Id.; see also Reply Br.
2. We are unpersuaded.
The Examiner explains: “Kahn teaches setting the size of the image
file to be stored in the memory, where setting the size of the image file is
considered to be the predetermined configuration (see paragraphs [0101];
[0107] and [0138]).” Ans. 11-12. We agree. Kahn paragraph 0101, lines
4-9 teaches that a user selects a resolution for captured images and teaches
that this selected resolution (and other factors) determines the image size.
The Examiner finds these user configuration selections determine the size of
an image and thus Kahn teaches a predetermined configuration that includes
a size of a file (i.e., a captured image taken using these predetermined
configuration selections that determine the size of an image file). We agree.
The Examiner relies on Pope for teaching recording captured events in a file
(Ans. 3-4 citing Pope col. 4, ll. 16-31) and relies on Kahn only for teaching
that a predetermined configuration includes a size of a file (e.g., the size of a
captured image stored in a capture buffer or other memory determined by
the selected resolution – see, e.g., Ans. 11).
In view of the above discussion and on the preponderance of the
evidence, we are not persuaded that the Examiner erred by finding that the
combination of Pope and Kahn teaches or suggests “wherein the
predetermined configuration includes a size of the file, a duration for
keeping the recorded events in the file, or a combination thereof” as recited
in claim 1.
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For the above reasons, we are not persuaded that the Examiner erred
in rejecting: (1) claim 1; and (2) claims 2-4, 7, 9, 10, 12-15, 17-19, 22, and
23 not argued separately (App. Br. 17).

Claims 5 and 16
Claim 5 depends from claim 1 and additionally recites “allowing a
user to configure the predetermined configuration.” The Examiner rejects
claim 5 finding the additional limitation taught or suggested by Kahn’s
description of selecting a resolution that, in turn, determines an image file
size. Ans. 5, 12. Appellant argues Kahn fails to disclose this feature for the
same reasons as claim 1. App. Br. 17-18; Reply Br. 5. For the same reasons
as claim 1 discussed above and on the preponderance of the evidence, we are
unpersauded that the Examiner has erred in rejecting claim 5 and claim 16
argued together with claim 5. Id.

Claim 20
Claim 20 depends from claim 1 and additionally recites “continuously
capturing one or more events comprises continuously capturing one or more
video events in a video format.” The Examiner rejects claim 20 finding
Pope teaches this feature. Ans. 9, 13 (citing, inter alia, Pope, col. 3, ll.
22-44). Appellant argues that Pope teaches only capture of a screen image
but fails to teach capturing “one or more video events in a video format.”
App. Br. 19; Reply Br. 6. We are unpersuaded. Pope column 3, lines 22-44,
as cited by the Examiner, clearly teaches a scan converter (124) that
intercepts the RGB video signals (i.e., video events in a video format). In
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view of the above discussion and on the preponderance of the evidence, we
are unpersauded that the Examiner has erred in rejecting claim 20.

Claim 21
Claim 21 depends from claim 1 and additionally recites
“automatically starting to continuously capture one or more events upon
startup of the computer.” The Examiner rejects claim 21 finding Pope
teaches this additional feature. Ans. 9 (citing Pope, col. 2, ll. 3-13; col. 2, l.
65 through col. 3, l. 45). Appellant argues that Pope teaches commencing a
capture session by placing the mouse pointer in the upper left corner of the
screen. App. Br. 20 (citing Pope col. 4, ll. 34-41). Appellant therefore
contends that mouse positioning activity occurs “before the capture session”
and thus concludes that the capture session “does not begin upon startup of
the computer.” Id. We are unpersuaded. The Examiner explains that
Pope’s automatic software test system records “all key-strokes, mouse
movements and communication lines into and out of a system-under-test”
and thus concludes that Pope teaches or suggests automatically starting to
continuously capture events upon startup of the computer as recited. Ans.
13. We find Appellant’s argument that positioning of the mouse pointer
preceding capture of events means that Pope’s automated system has not
commenced event capture upon startup of the computer is unavailing.
Appellant has not rebutted the Examiner’s finding that Pope teaches capture
of all events. Positioning of the pointer on a screen at a default position to
commence capture of events does not preclude capture of all events upon
startup of the computer.
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Further supporting the Examiner’s position, Pope column 4, line 23
makes clear that the automated test system is started (step 300 of Fig. 3)
followed by startup of the system under test (step 302 of Fig. 3). The
Examiner cited this portion of Pope in rejecting claim 1 from which claim 21
depends as teaching the recording of captured events in a file. Ans. 3-4.
In view of the above discussion and on the preponderance of the
evidence, we are unpersuaded that the Examiner has erred in rejecting claim
21.

REJECTION OVER POPE, KAHN, AND CHEN
Claim 8
Appellant designates claim 8 (dependent from claim 1) as argued
separately. App. Br. 13. However, Appellant argues that the Examiner
erred in rejecting claim 8 only for the same reasons as claim 1. App. Br. 18;
Reply Br. 5. Thus, for the same reasons as claim 1, and on the
preponderance of the evidence, we are unpersauded that the Examiner has
erred in rejecting claim 8.

REJECTION OVER POPE, KAHN, AND NOCERA
Claim 11
Appellant designates claim 11 (dependent from claim 10) as argued
separately. App. Br. 13. However, Appellant argues that the Examiner
erred in rejecting claim 8 only for the same reasons as claim 1. App. Br. 18;
Reply Br. 6. Thus, for the same reasons as claim 10 (argued together with
claim 1), and on the preponderance of the evidence, we are unpersauded that
the Examiner has erred in rejecting claim 11.
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DECISION
For the above reasons, the rejections of claims 1-5 and 7-23 under 35
U.S.C. § 103 are 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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