Ex Parte Alcorn et al

Patent Trial and Appeal Board

Dec 5, 2012

11737928 (P.T.A.B. Dec. 5, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/737,928 04/20/2007 John William Alcorn RSW920070002US1 6521
58139 7590 12/05/2012
IBM CORP. (WSM)
c/o WINSTEAD P.C.
P.O. BOX 131851
DALLAS, TX 75313
EXAMINER
OBERLY, VAN HONG
ART UNIT PAPER NUMBER
2166
MAIL DATE DELIVERY MODE
12/05/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN WILLIAM ALCORN, KEVIN SPENCER BARKER,
DAVID MICHAEL EADS, and JOACHIM H. FRANK
____________

Appeal 2010-007674
Application 11/737,928
Technology Center 2100
____________

Before HOWARD B. BLANKENSHIP, STEPHEN C. SIU, and
GLENN J. PERRY, Administrative Patent Judges.

SIU, Administrative Patent Judge

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134 from the Examiner’s rejection
of claims 1-20.1 We have jurisdiction under 35 U.S.C. § 6(b).

1 We note that claim 17 contains a typographical error in that claim 17
depends from itself. We assume that it was intended that claim 17 depend
from claim 16 and consider this oversight to be harmless error.
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STATEMENT OF THE CASE
The disclosed invention relates generally to pre-filters from a set of
event subscriptions to select events of interest for event consumers (Spec. 1).
Independent claim 1 is illustrative:
1. A method for achieving a balance between pre-filter efficiency
and pre-filter throughput comprising the steps of:
obtaining a plurality of event subscriptions which define a plurality of
events to be routed to an event consumer;
constructing a plurality of pre-filters of varying complexity and
filtering power; and
selecting, by a processor, one of said plurality of pre-filters to filter
events to said event consumer based on comparing a threshold to a
complexity measure for each of said plurality of pre-filters.

The Examiner rejects claims 1, 7, 9, 15, and 16 under 35 U.S.C. §
102(e) as anticipated by U.S. Patent Application Publication No.
2007/0168550 A1 (“Wang”); claims 2, 10, and 17 under 35 U.S.C. § 103(a)
as unpatentable over Wang and U.S. Patent No. 5,265,004 (“Schultz”);
claims 3, 5, 6, 11, 13, 14, 18, and 20 under 35 U.S.C. § 103(a) as
unpatentable over Wang and U.S. Patent Application Publication No.
2006/0085507 A1 (“Zhao”); claim 4, 12, and 19 under 35 U.S.C. § 103(a) as
unpatentable over Wang, Zhao, and Schultz; and claim 8 under 35 U.S.C. §
103(a) as unpatentable over Wang and U.S. Patent Application Publication
No. 2005/0246302 A1 (“Lorenz”).

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Issue
Did the Examiner err in rejecting claims 1-20?
Principles of Law
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).
Analysis
35 U.S.C. § 102(e) – claims 1, 7, 9, 15, and 16
Wang discloses a system in which “new [event] subscriptions 302 are
received” (¶ [0054], ll. 3-4), “event matcher nodes” host the subscriptions
(e.g., ¶ [0054], ll. 7-9), and an event matcher node “attempts to match each
received event to each of the subscriptions hosted by the matcher nodes” (¶
[0056]). In other words, Wang discloses obtaining a plurality of event
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subscriptions and constructing “pre-filters” (i.e., matcher nodes) to filter
events to an event consumer based on the received subscriptions (i.e.,
matches events to subscriptions), as recited in claim 1. Wang also discloses
selecting a matcher node (i.e., a “pre-filter”) based on “the matcher node
associated with the . . . greatest overlap” (¶ [0097]), the degree of overlap
indicating a complexity measure.2 We agree with the Examiner that Wang
discloses the features recited in claim 1.
Appellants argue that “[t]here is no language in . . . [Wang] that
discloses selecting one of the plurality of pre-filters to filter events to the
event consumer” (App. Br. 5). However, as the Examiner points out and as
indicated above, Wang discloses selecting a matcher node (or “pre-filter”)
(see, e.g., ¶ [0097]) and that the matcher node “generates the event
notification . . . for each subscriber on the list . . . to be notified” (¶ [0056]) –
i.e., “filter events to said event consumer” as recited in claim 1. Appellants
do not indicate sufficient differences between this disclosure of Wang, at
least, and the claim requirements of a “pre-filter” to “filter events” to a
consumer. Appellants state that “[a] pre-filter is not being selected” in
Wang because “a subscription is being assigned to a matcher node” and
because in Wang, “each matcher node hosts a set of subscriptions” (App. Br.
7). However, even assuming that Wang discloses that a subscription is

2 Wang discloses “the subscriptions may be . . . rectangles in an event space .
. . [that] may overlap” (¶ [0065]) as “subscription filters [that] typically
describe a more complex area of event space” (¶ [0066])
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assigned to a matcher node or that a matcher node hosts a set of
subscriptions as Appellants argue, Appellants have not indicated how any of
these suppositions demonstrate that Wang does not disclose selecting a pre-
filter (or matcher node). As we have stated, Wang discloses a matcher node
“is selected” (¶ [0097]). Since Wang discloses selecting a matcher node (or
“pre-filter”) and Appellants have not provided sufficient evidence that the
“selecting” of Wang differs from “selecting” as recited in claim 1, we are
not persuaded by Appellant’s argument.
Appellants also argue that Wang fails to disclose that a pre-filter is
selected “based on comparing a threshold to a complexity measure” (App.
Br. 5) because, according to Appellants, Wang discloses “assigning a new
subscription to a matcher node,” “a subscription is being assigned to a
matcher node,” “a multi-matcher node system where each matcher node
hosts a set of subscriptions,” “[a] matcher node is being selected to host the
new subscription,” and “a matcher node is selected to host the new
subscription based on being associated with the R-tree whose leaf node
resulted in the greatest overlap” (App. Br. 7).
Even assuming that Wang discloses each of the disclosures by
Appellants as indicated above, we still disagree with Appellants’ argument
because, as we stated above and as pointed out by the Examiner, Wang
discloses selecting a matcher node (i.e., a “pre-filter”) based on “the matcher
node associated with the . . . greatest overlap” of data rectangles (¶ [0097])
and that the degree of overlap of rectangles indicates a level of complexity
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(see, e.g., (¶ [0065], ¶ [0066]). Appellants provide insufficient evidence of
any difference between Wang’s disclosure of selecting a matcher node based
on complexity (or overlap of rectangles) and the claim recitation of selecting
a pre-filter based on comparing a threshold to a complexity measure.
Appellants further argue that Wang fails to disclose a threshold that is
“used to select the matcher node to host the new subscription” (App. Br. 8)
but does not point out sufficient differences between Wang’s disclosure of
selecting a matcher node based on level (i.e., a “threshold”) of complexity
and comparing a threshold to a complexity measure as recited in claim 1.
The Examiner did not err in rejecting claims 1, 9, and 16 as
anticipated by Wang.
Regarding claims 7 and 15, Appellants argue that Wang fails to
disclose the pre-filters as being a conjunction of conditions that all of said
plurality of event subscriptions have in common. Claim 7 recites a pre-filter
is constructed as being a conjunction of those conditions that all of the
plurality of event subscriptions have in common. We agree with Appellants.
While the Examiner states that Wang discloses “a filter comprising a
conjunction of predicates” (Ans. 17), the Examiner does not demonstrate
that the “conjunction of predicates” of Wang include conjunction of
conditions that all of the event subscriptions have in common. The
Examiner also states that Wang discloses that “some subscriptions overlap”
(Ans. 17) but does not indicate how such a disclosure indicates that the pre-
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filters have conjunction of conditions that all of the event subscriptions have
in common.
The Examiner erred in rejecting claims 7 and 15 as anticipated by
Wang.

35 U.S.C. § 103(a) – claims 2-6, 8, 10-14, and 17-20
Regarding claims 2, 10, and 17, Appellants argue that the combination
of Wang and Schultz fails to disclose or suggest “one of the plurality of pre-
filters has a largest number of atomic Boolean expressions” (App. Br. 11).
Claim 2, for example, recites a largest number of Boolean expressions that
does not exceed a threshold. As Appellants state, Schultz discloses “limiting
the maximum number of expressions to four” (App. Br. 11). If Schultz
limits the maximum number of expressions to a particular number or
“threshold,” then Schultz discloses a “largest number” of expressions (in one
example, the largest number being “4”). We agree with the Examiner that it
would at least have been obvious to one of ordinary skill in the art, given the
Schultz disclosure of using a maximum number of expressions that a
“largest number” of expressions would be used, the “largest number” also
being the “maximum number” of expressions that does not exceed a
threshold (the threshold being “4” in one example of Schultz).
Appellants also argue that “the Examiner’s rationale [to combine
Wang and Schultz] does not provide reasons that the skilled artisan . . .
would modify Wang to include the . . . missing claim limitation of claims 2,
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10, and 17” (App. Br. 14). However, the Examiner appears to provide
sufficient reasons with supporting factual underpinnings to support the
conclusion that the combination would have been obvious (see, e.g., Ans. 7-
9, 18) while Appellants do not adequately point to specific flaws in the
Examiner’s stated reasons.
Regarding claims 3, 5, 11, 13, and 18 (App. Br. 16-18), Appellants
argue that Zhao fails to disclose “constructing a pre-filter” (App. Br. 16, 18).
However, the Examiner rejects the claims over the combination of Wang
and Zhao rather than over Zhao alone. Furthermore, the Examiner relies on
Wang for this disputed claim feature. Thus, even assuming Appellants’
contention to be correct that Zhao fails to disclose “constructing a pre-filter,”
Appellants do not sufficiently demonstrate that the combination of Wang
and Zhao also fails to disclose or suggest this feature.
Regarding claims 6, 14, and 20 (App. Br. 18-20), Appellants state that
Wang discloses a “filter,” “conjunction of predicates,” and “subscription
partitioning” (App. Br. 19) and Zhao discloses “disjunction of conjunctive
filters” and “performing a disjunctive normal form . . . transformation”
(App. Br. 19). However, Appellants argue that “[t]here is no language . . .
[in the references] that teaches constructing a pre-filter by partitioning the . .
. subscriptions” (App. Br. 19). We disagree with Appellants for at least the
reasons set forth by the Examiner (e.g., Ans. 10-12, 19-20). In addition,
while Appellants point out that Wang discloses a “filter” and “subscription
partitioning,” Appellants merely state that the combination of Wang and
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Zhao fails to disclose a “pre-filter” and “partitioning the . . . subscriptions”
without pointing to differences between the “filter” and “subscription
partitioning” of Wang and the “pre-filter” and “partitioning” as recited in the
claims.
With respect to claims 3 and 11, Appellants also argue that “the
Examiner’s rationale [to combine Wang and Zhao] does not provide reasons
that the skilled artisan . . . would modify Wang to include the . . . missing
claim limitation of claims 3 and 11” (App. Br. 22). However, the Examiner
appears to provide sufficient reasons with supporting factual underpinnings
to support the conclusion that the combination would have been obvious
(see, e.g., Ans. 9-10, 20-21) while Appellants do not point to specific flaws
in the Examiner’s stated reasons. Appellants provide similar arguments
with respect to claims 5, 6, 13, 14, 18, and 20 (App. Br. 22-26) and claims 4,
12, and 19 (App. Br. 27-30). We disagree with Appellants for at least the
reasons previously stated.
With respect to claims 4, 12, and 19, Appellants argue the
combination of Wang, Zhao, and Schultz fails to disclose or suggest
“constructing a pre-filter . . . as a logical disjunction of all event type checks
of . . . event subscriptions” or “each event type check is AND-ed” (App. Br.
27) but does not sufficiently demonstrate differences between the “filter” of
Wang (as described previously) and the recited “pre-filter,” the “disjunction”
disclosed by Zhao (as described previously) and the recited “logical
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disjunction,” or the “AND expressions of Schultz” (see, e.g., App. Br. 27)
and the recited “AND-ed”.
With respect to claim 8 (App. Br. 33), Appellants argue that while
Lorenz discloses “factoring of expression before the inputs are submitted,”
Lorenz, according to Appellants, fails to disclose or suggest “simplifying
expressions.” Because Appellants do not provide evidence or specific
arguments delineating a difference between “factoring” expressions (Lorenz)
and “simplifying” expressions (as claimed), we cannot agree with
Appellants’ contention that “simplifying” expressions would not at least
have been obvious to one of ordinary skill in the art given that “factoring”
expressions (not shown to be different from “simplifying”) was known in the
art (as disclosed by Lorenz, according to Appellants).

Conclusion of Law
The Examiner did not err in rejecting claims 1-6, 8-14, and 16-20 but
erred in rejecting claims 7 and 15.

SUMMARY
We reverse the Examiner’s rejection of claims 7 and 15 under 35
U.S.C. § 102(e) as anticipated by Wang.
We affirm the Examiner’s rejection of claims 1, 9, and 16 under 35
U.S.C. § 102(e) as anticipated by Wang.
We affirm the Examiner’s rejection under 35 U.S.C. § 103(a) of
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claims 2, 10, and 17 as unpatentable over Wang and Schultz; claims 3, 5, 6,
11, 13, 14, 18, and 20 as unpatentable over Wang and Zhao; claim 4, 12, and
19 as unpatentable over Wang, Zhao, and Schultz; and claim 8 as
unpatentable over Wang and Lorenz.

AFFIRMED-IN-PART

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