DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This Office Action is in response to the filing date of 6/23/2023.
Claims 1-20 are pending and have been considered below.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 1, 11, and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 9-12, and 15-18 of U.S. Patent No.12417166 respectively. Although the claims at issue are not identical, they are not patentably distinct from each other. Below is an example of a mapping between the claims for viewing:
U.S. Patent No. 12417166
Instant Application No. 18213663
1. (Original) A method comprising:
1. A computer-implemented method, comprising:
generating a set of test cases for a system under test (SUT), the set of test cases based on attribute-value pairs modeled as input to the SUT;
generating a set of test cases for a system under test (SUT), the set of test cases being based on attribute-value pairs modeled as input to the SUT;
augmenting the set of test cases, comprising:
augmenting the set of test cases, comprising:
locating a missing counterpart for a first combination of values in a first test case in the set of test cases, based on identifying a number of instances of the first combination of values in the set of test cases;
locating a missing counterpart for a first combination of values in a first test case in the set of test cases based on identifying a number of instances of the first combination of values in the set of test cases,
generating a new test case based on modifying the first test case to act as the missing counterpart; and
Claim 2
generating a new test case based on modifying the first test case to act as the missing counterpart,
determining whether the new test case violates a constraint from a set of predefined constraints,
Claim 3 & Claim 4
in response to determining that the new test case violates the constraint, modifying at least one of the values in the new test case, and
adding the new test case to the set of test cases; and
adding the modified new test case to the set of test cases; and
identifying a fault for the SUT based on executing the augmented set of test cases.
identifying a fault for the SUT based on executing the augmented set of test cases.
2. (Original) The method of claim 1, wherein locating the missing counterpart for the first combination of values further comprises:
identifying the first combination of values in the first test case; and
determining that the set of test cases comprises an insufficient number of instances of test cases with the first combination of values.
3. (Original) The method of The method of wherein the first combination of values comprises a first pair of values; and
wherein determining that the set of test cases comprises the insufficient number of instances of test cases comprises determining that the set of test cases comprises fewer than two instances of test cases with the first pair of values.
4. (Original) The method of claim 3, wherein generating the new test case based on modifying the first test case to act as the missing counterpart further comprises:
modifying a value in the first test case, other than the first pair of values.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 12 is a system claim but recites limitations performed by a method claim 1. It’s unclear whether claim 12 depends on claim 1 or it’s an independent claim.
Claim 19 is a computer program product claim but recites limitations performed by a method claim 13. It’s unclear whether claim 19 depends on claim 13 or it’s an independent claim.
Claim 20 is a system claim but recites limitations performed by a method claim 13. It’s unclear whether claim 20 depends on claim 13 or it’s an independent claim.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 abstract idea without significantly more.
Regarding claim 1:
Under Prong 1 Step 2A, claim 1 recites “generating a set of test cases…; augmenting the set of test cases, comprising: locating a missing counterpart for a first combination of values in a first test case in the set of test cases based on identifying a number of instances of the first combination of values in the set of test cases, generating a new test case based on modifying the first test case to act as the missing counterpart, determining whether the new test case violates a constraint from a set of predefined constraints, in response to determining that the new test case violates the constraint, modifying at least one of the values in the new test case, and adding the modified new test case to the set of test cases; and identifying a fault for the SUT…” as drafted, recite functions that, under its broadest reasonable interpretation, covers functions that could reasonably be performed in the mind, including with the aid of pen and paper, but for the recitation of generic computer components. Thus, these limitations recite and fall within the “Mental Processes” grouping of abstract ideas
Under Prong 2, Step 2A, the judicial exception is not integrated into a practical application. The claim recites the following additional elements (1) “a system under test (SUT)” merely instructions to implement the abstract idea on a computer, or merely uses a computer, with instructions, as a tool to perform the abstract idea according to MPEP 2106.05(f), thus, not indicative of an integration into a practical application. The claim further recites (2) “executing the augmented set of test cases” which fails to meaningfully limit the claim because it does not require any particular application of the judicial exception and is, at best, the equivalent of merely adding the words “apply it” (or an equivalent) to the judicial exception. See MPEP 2106.05(f). The additional element (2) recites only the idea executing test cases without details on how this is accomplished. The claim omits any details as to how the execution of the test cases solves a technical problem, and instead of recites only the idea of a solution or outcome. Therefore, the additional element (2) attempts to cover any solution to the identified problem of testing with no restriction on how the execution of the test cases is accomplished and no description of the mechanism for accomplishing the outcome and does not integrate the judicial exception into a practical application because this type of recitation is equivalent to the words “apply it.”
Under Step 2B, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above, with respect to integration of the abstract idea into a practical application, the additional (1) mere use of generic computer to implement the abstract idea, as discussed above, which does not amount to significantly more, thus, not inventive concept. The additional element (2) does not require any particular application of the judicial exception and is at best the equivalent of merely adding the words “apply it” (or an equivalent) to the judicial exception.
Regarding claim 11:
Under Prong 1 Step 2A, claim 1 recites “generating a set of test cases…; augment the set of test cases, comprising: locating a missing counterpart for a first combination of values in a first test case in the set of test cases based on identifying a number of instances of the first combination of values in the set of test cases, generating a new test case based on modifying the first test case to act as the missing counterpart, determining whether the new test case violates a constraint from a set of predefined constraints, in response to determining that the new test case violates the constraint, modifying at least one of the values in the new test case, and adding the modified new test case to the set of test cases; and identify a fault for the SUT…” as drafted, recite functions that, under its broadest reasonable interpretation, covers functions that could reasonably be performed in the mind, including with the aid of pen and paper, but for the recitation of generic computer components. Thus, these limitations recite and fall within the “Mental Processes” grouping of abstract ideas
Under Prong 2, Step 2A, the judicial exception is not integrated into a practical application. The claim recites the following additional elements (1) “computer program product comprising: one or more computer readable storage media, and program instructions and a system under test (SUT)” merely instructions to implement the abstract idea on a computer, or merely uses a computer, with instructions, as a tool to perform the abstract idea according to MPEP 2106.05(f), thus, not indicative of an integration into a practical application. The claim further recites (2) “executing the augmented set of test cases” which fails to meaningfully limit the claim because it does not require any particular application of the judicial exception and is, at best, the equivalent of merely adding the words “apply it” (or an equivalent) to the judicial exception. See MPEP 2106.05(f). The additional element (2) recites only the idea executing test cases without details on how this is accomplished. The claim omits any details as to how the execution of the test cases solves a technical problem, and instead of recites only the idea of a solution or outcome. Therefore, the additional element (2) attempts to cover any solution to the identified problem of testing with no restriction on how the execution of the test cases is accomplished and no description of the mechanism for accomplishing the outcome and does not integrate the judicial exception into a practical application because this type of recitation is equivalent to the words “apply it.”
Under Step 2B, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above, with respect to integration of the abstract idea into a practical application, the additional (1) mere use of generic computer to implement the abstract idea, as discussed above, which does not amount to significantly more, thus, not inventive concept. The additional element (2) does not require any particular application of the judicial exception and is at best the equivalent of merely adding the words “apply it” (or an equivalent) to the judicial exception.
Regarding claim 13:
Under Prong 1 Step 2A, claim 1 recites “generating a set of test cases…; augmenting the set of test cases, comprising: locating a missing counterpart for a first combination of values in a first test case in the set of test cases based on identifying a number of instances of the first combination of values in the set of test cases, generating a new test case based on modifying the first test case to act as the missing counterpart, determining whether the new test case violates a constraint from a set of predefined constraints, in response to determining that the new test case violates the constraint, modifying at least one of the values in the new test case, and adding the modified new test case to the set of test cases; and identifying a fault for the SUT…” as drafted, recite functions that, under its broadest reasonable interpretation, covers functions that could reasonably be performed in the mind, including with the aid of pen and paper, but for the recitation of generic computer components. Thus, these limitations recite and fall within the “Mental Processes” grouping of abstract ideas
Under Prong 2, Step 2A, the judicial exception is not integrated into a practical application. The claim recites the following additional elements (1) “a system under test (SUT)” merely instructions to implement the abstract idea on a computer, or merely uses a computer, with instructions, as a tool to perform the abstract idea according to MPEP 2106.05(f), thus, not indicative of an integration into a practical application. The claim further recites (2) “executing the augmented set of test cases” which fails to meaningfully limit the claim because it does not require any particular application of the judicial exception and is, at best, the equivalent of merely adding the words “apply it” (or an equivalent) to the judicial exception. See MPEP 2106.05(f). The additional element (2) recites only the idea executing test cases without details on how this is accomplished. The claim omits any details as to how the execution of the test cases solves a technical problem, and instead of recites only the idea of a solution or outcome. Therefore, the additional element (2) attempts to cover any solution to the identified problem of testing with no restriction on how the execution of the test cases is accomplished and no description of the mechanism for accomplishing the outcome and does not integrate the judicial exception into a practical application because this type of recitation is equivalent to the words “apply it.”
Under Step 2B, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above, with respect to integration of the abstract idea into a practical application, the additional (1) mere use of generic computer to implement the abstract idea, as discussed above, which does not amount to significantly more, thus, not inventive concept. The additional element (2) does not require any particular application of the judicial exception and is at best the equivalent of merely adding the words “apply it” (or an equivalent) to the judicial exception.
Regarding claims 2-10 and 14-20 recite limitations that, under its broadest reasonable interpretation, covers functions that could reasonably be performed in the mind, including with the aid of pen and paper, but for the recitation of generic computer components
Regarding claims 8, 9, and 18-20 recite limitations that do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Examiner’s Statement of Reasons for Allowance
Claims 1-20 are considered allowable when reading the claims in light of the specification. The prior arts of record do not teach or reasonably suggest the combination of the limitations specified in the independent claims 1, 11, and 13.
The closest prior arts are:
Prasad et al. (US20190042398) teaches a method to interactively repair a software program using one or more automatically generated tests with human-provided test oracles may include identifying a fault location in a software program, generating a potential repair at the fault location based on a repair candidate, automatically generating a first test to test the potential repair, and generating a first query for a first test oracle based on the first test. The method may also include obtaining a response to the first query from a human, generating a first human-provided test oracle based on the first query and the obtained response to the first query, augmenting a test suite to include the first automatically generated test with the first human-provided test oracle, and testing the potential repair using the augmented test suite including the first automatically generated test with the first human-provided test oracle (see the Abstract).
Santelices et al. (“Test-suite Augmentation for Evolving Software”) teaches (1) improve the effectiveness of our technique by identifying all relevant change-propagation paths, (2) extend the technique to handle multiple and more complex changes, (3) introduce the first tool that fully implements the technique, and (4) present an empirical evaluation performed on real software. Our results show that our technique is practical and more effective than existing test-suite augmentation approaches in identifying test cases with high fault-detection capabilities (see the Abstract).
Harder et al. (“Improving Test Suites via Operational Abstraction”) teaches the operational difference technique for generating, augmenting, and minimizing test suites. The technique is analogous to structural code coverage techniques, but it operates in the semantic domain of program properties rather than the syntactic domain of program text. The operational difference technique automatically selects test cases; it assumes only the existence of a source of test cases. The technique dynamically generates operational abstractions (which describe observed behavior and are syntactically identical to formal specifications) from test suite executions. Test suites can be generated by adding cases until the operational abstraction stops changing. The resulting test suites are as small, and detect as many faults, as suites with 100% branch coverage, and are better at detecting certain common faults. This paper also presents the area and stacking techniques for comparing test suite generation strategies. These techniques avoid bias due to test suite size (see the Abstract).
Xie (“Augmenting Automatically Generated Unit-Test Suites with Regression Oracle Checking”) teaches an automatic approach and its supporting tool, called Orstra, for augmenting an automatically generated unit-test suite with regression oracle checking. The augmented test suite has an improved capability of guarding against regression faults. In our new approach, Orstra first executes the test suite and collects the class under test’s object states exercised by the test suite. On collected object states, Orstra creates assertions for asserting behavior of the object states. On executed observer methods (public methods with non-void returns), Orstra also creates assertions for asserting their return values. Then later when the class is changed, the augmented test suite is executed to check whether assertion violations are reported. We have evaluated Orstra on augmenting automatically generated tests for eleven subjects taken from a variety of sources. The experimental results show that an automatically generated test suite’s fault-detection capability can be effectively improved after being augmented by Orstra (see the Abstract).
Applicant’s claimed invention is deemed allowable over the cited prior arts above as the prior arts do not teach the combination of the limitations specified in the independent claim 1 “augmenting the set of test cases, comprising: locating a missing counterpart for a first combination of values in a first test case in the set of test cases based on identifying a number of instances of the first combination of values in the set of test cases, generating a new test case based on modifying the first test case to act as the missing counterpart, determining whether the new test case violates a constraint from a set of predefined constraints, in response to determining that the new test case violates the constraint, modifying at least one of the values in the new test case, and adding the modified new test case to the set of test cases; and identifying a fault for the SUT based on executing the augmented set of test cases.”
Independent claims 11 and 13 recite similar limitations as in claim 1 and therefore are allowed over the prior arts of record for the same reason given for claim 1 above.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHILLIP H NGUYEN whose telephone number is (571)270-1070. The examiner can normally be reached Monday-Friday 9:00AM-5:00PM.
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/PHILLIP H NGUYEN/Primary Examiner, Art Unit 2191
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