Ex Parte ReevesDownload PDFPatent Trial and Appeal BoardJan 7, 201410795528 (P.T.A.B. Jan. 7, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SIMON J. REEVES ___________ Appeal 2011-000728 Application 10/795,528 Technology Center 2800 ____________ 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 2 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. Appeal 2011-000728 Application 10/795,528 3 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. Appeal 2011-000728 Application 10/795,528 4 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 Appeal 2011-000728 Application 10/795,528 5 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. Appeal 2011-000728 Application 10/795,528 6 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 Appeal 2011-000728 Application 10/795,528 7 ‘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. Appeal 2011-000728 Application 10/795,528 8 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 Appeal 2011-000728 Application 10/795,528 9 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. Appeal 2011-000728 Application 10/795,528 10 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. Appeal 2011-000728 Application 10/795,528 11 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 tj Copy with citationCopy as parenthetical citation