Ex Parte Kinzhalin et al - Page 4

                Appeal 2007-1416                                                                             
                Application 09/881,791                                                                       
                      We affirm the rejections.                                                              
                                                   ISSUE                                                     
                      The issue is whether Appellants have shown that the Examiner erred                     
                in rejecting the claims under 35 U.S.C. § 103(a).  The issue turns on (1)                    
                whether Pavela teaches a specification of a computer program; (2) whether                    
                that specification includes a plurality of sentences describing a computer                   
                program; (3) whether Pavela teaches determining if the sentences are                         
                testable assertions, and (4) whether other claimed limitations are present in                
                the references.                                                                              

                                           FINDINGS OF FACT                                                  
                   1. Appellants have invented a semi-automatic way of testing code                          
                      segments in a computer program under development.  The method is                       
                      to be used with a Technology Compatibility Kit (TCK) test                              
                      development process.  (Specification 10, l. 10).  The method starts                    
                      with the specification of the computer program, which is explained as                  
                      follows: “The specification 102 can be any specification, such as a                    
                      Javadoc specification for a Java technology API [application program                   
                      interface].  Preferably, the specification 102 includes a plurality of                 
                      assertions that can be tested.”  (Specification 11, ll. 16-18).  The                   
                      specification is processed to generate a list of assertions.                           
                      (Specification 11, l. 21).  Appellants explain, “The embodiments of                    
                      the present invention scan through the specification and split the entire              
                                                                                                            
                representative independent claim.  See In re Young, 927 F.2d 588, 590, 18                    
                USPQ2d 1089, 1091 (Fed. Cir. 1991).                                                          

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