Ex Parte Barsness et al

Patent Trial and Appeal Board

Jan 3, 2014

11833290 (P.T.A.B. Jan. 3, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/833,290 08/03/2007 Eric Lawrence Barsness ROC920070112US1 7625
46797 7590 01/03/2014
IBM CORPORATION, INTELLECTUAL PROPERTY LAW
DEPT 917, BLDG. 006-1
3605 HIGHWAY 52 NORTH
ROCHESTER, MN 55901-7829
EXAMINER
KIM, TAELOR
ART UNIT PAPER NUMBER
2156
MAIL DATE DELIVERY MODE
01/03/2014 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 ERIC LAWRENCE BARSNESS,
AMANDA PETERS,
and JOHN MATTHEW SANTOSUOSSO
1

____________________

Appeal 2011-007807
Application 11/833,290
Technology Center 2100
____________________

Before MICHAEL J. STRAUSS, LARRY J. HUME, and JUSTIN BUSCH,
Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-25, all claims pending in the application. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1
The Real Party in Interest is International Business Machines Corp. App.
Br. 3.
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STATEMENT OF THE CASE
2

The Invention
Appellants’ invention relates to database storage and, more
particularly, to multi-nodal compression techniques for an in-memory
database. See Spec., ¶ [0001].
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added):
1. A computer-implemented method for distributing
a database having a plurality of datasets on a plurality of
compute nodes on a parallel computing system, comprising:
selecting a first dataset from the plurality of datasets;
evaluating a profile associated with the first dataset to
determine a data compression level to use in compressing the
first dataset;
compressing the first dataset using the determined data
compression level;
storing the compressed dataset on at least one of the
plurality of compute nodes; and
distributing the remaining datasets from the plurality of
datasets on plurality of compute nodes of the parallel
computing system, thereby creating an in-memory database.

2
Our decision refers to Appellants’ Appeal Brief (“App. Br.,” filed
Oct. 4, 2010); Reply Brief (“Reply Br.,” filed Jan. 31, 2011); Examiner’s
Answer (“Ans.,” mailed Nov. 29, 2010); Final Office Action (“FOA,”
mailed Apr. 29, 2010); and the original Specification (“Spec.,” filed
Aug. 3, 2007).
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Prior Art
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Bantz US 2004/0003272 A1 Jan. 1, 2004
Tanzer US 2007/0255818 A1 Nov. 1, 2007
Fallon US 2008/0232457 A1 Sept. 25, 2008
Rejections on Appeal
3

1. Claims 1-6, 8-15, 17-23, and 25 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Bantz and Fallon.
Ans. 5.
2. Claims 7, 16, and 24 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Bantz, Fallon, and Tanzer.
Ans. 21.

3
Although neither before us on appeal nor dispositive to our Decision, if
further prosecution of claim 10 should ensue, we invite the Examiner to
review claim 10 to ensure statutory subject matter eligibility. Under our
jurisprudence, the scope of the recited “computer readable storage medium”
appears to encompass transitory media such as signals or carrier waves,
where, as here, the Specification does not limit the computer readable
storage to non-transitory forms. Accord Ex parte Mewherter, 107 USPQ2d
1857 (PTAB 2013) (precedential) (holding recited machine-readable storage
medium ineligible under § 101 since it encompasses transitory media).
Here, the recited “computer readable storage medium” is not claimed as
non-transitory, and the disclosure does not expressly and unambiguously
limit that medium to solely non-transitory forms via a definition or similar
limiting language. Therefore, the recited medium may encompass transitory
forms and be ineligible under § 101.
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ISSUE
Appellants argue (App. Br. 11-14; Reply Br. 2-5) that the Examiner’s
rejection of claim 1 under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Bantz and Fallon is in error. These contentions present us
with the following issue:
Did the Examiner err in finding that the cited combination of prior art
teaches or suggests all the limitations of claim 1, particularly “distributing
the remaining datasets from the plurality of datasets on plurality of compute
nodes of the parallel computing system, thereby creating an in-memory
database,” as recited in claim 1?
ANALYSIS
We only consider those arguments actually made by Appellants in
reaching this decision, and we do not consider arguments which Appellants
could have made but chose not to make in the Briefs so that any such
arguments are deemed to be waived. 37 C.F.R. § 41.37(c)(1)(vii).
We disagree with Appellants’ conclusions with respect to claim 1, and
we adopt as our own (1) the findings and reasons set forth by the Examiner
in the action from which this appeal is taken and (2) the reasons and
rebuttals set forth by the Examiner in the Examiner’s Answer in response to
Appellants’ Arguments. However, we highlight and address specific
findings and arguments regarding claim 1 for emphasis as follows.
Appellants contend the prior art combination does not teach or suggest
most of the limitations of claim 1, particularly the recited “parallel
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computing system” and “in-memory database.” App. Br. 11-14. In
addition, Appellants contend,
Clearly, backups of data are not a distributed database
(in-memory or otherwise), as the backups are not accessed,
queried, or in any way used to create an “in-memory database”
as required by claim 1 (and claims 10 and 19). Similarly,
merely networking computers does not teach, show or even
suggest a parallel computing system. Instead, Bantz discloses
portions of backup data may be stored on one (or more)
computer systems connected to a network.
Reply Br. 3.
Claim terms are to be given their broadest reasonable interpretation,
as understood by those of ordinary skill in the art and taking into account
whatever enlightenment may be had from the Specification. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997). Under this standard, we therefore
find a parallel computing system to be a system in which multiple processors
are coordinated to perform tasks at a number of different nodes. See Spec.,
¶¶ [0002]-[0003].
By arguing “[t]he mere presence of ‘a set of computers networked
together’ in no way creates a parallel computing system” (App. Br. 12-13), it
appears Appellants are attempting to import limitations from the
Specification to preclude Bantz from being interpreted as teaching a parallel
computing system. Mere attorney arguments and conclusory statements that
are unsupported by factual evidence are entitled to little probative value. In
re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984); and Ex parte Belinne, No. 2009-004693,
2009 WL 2477843 slip op. at 7-8 (BPAI Aug. 10, 2009) (informative),
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available at
http://www.uspto.gov/web/offices/dcom/bpai/its/fd09004693.pdf.
Under the broadest reasonable interpretation standard, and consistent
with the definition above, we find Bantz teaches a parallel computing system
by its disclosure of a network of computers that cooperatively operate to
perform at least one task, i.e., to distribute a file that is segmented into a
number of smaller compressed files to a number of distributed computers.
See Bantz, ¶ [0018], Fig. 1. Consistent with the Examiner’s findings, and
noting Appellants have not provided an explicit definition of the disputed
phrase, or any evidence on the record contrary to the Examiner’s findings,
we find Bantz broadly but reasonably teaches a parallel computing system.
Id.; see also Ans. 30-32.
As for the recited “in-memory database,” Appellants’ Specification is
silent on any particular definition, or how such an in-memory database is
established. In agreement with the Examiner (Ans. 28), we find an “in-
memory database” is a database that keeps active records in a memory, e.g.,
a main memory, rather than on a disk or other peripheral storage device.
As mentioned, Appellants do not provide any indication of how such
an in-memory database is established. In addition, we find that one of
ordinary skill in the art at the time of the invention would have understood
that the various distributed computers of Bantz and PCs in general contain
active or “main” memory. See, generally, Bantz, and Fig. 1, set of
computers 114 (disclosing personal computers (PC)); and see Fallon,
¶ [0008] (“Modern computers utilize a hierarchy of memory devices . . .
[and i]n order to achieve maximum performance levels, modern processors
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utilize onboard memory and on board cache to obtain high bandwidth access
to both program and data.”).
We note Appellants have not affirmatively recited storing data in any
main memory, nor have they affirmatively recited creating an in-memory
database. Claim 1 only requires “storing the compressed dataset on at least
one of the plurality of compute nodes.” Further, claim 1 does not explicitly
recite creating an in-memory database, but instead claims an in-memory
database is created as a consequence of the claimed steps, i.e., “distributing
the remaining datasets from the plurality of datasets on plurality of compute
nodes of the parallel computing system, thereby creating an in-memory
database.” Claim 1 (emphasis added). Appellants also contend,
Furthermore, while the Examiner tries to rely on the
present specification to support the Examiner's position, the
specification plainly does not do so. Instead, the specification
supports Applicants’ interpretation of what is claimed; namely,
creating an in-memory database by distributing portions of
database data such that they will fit within memory space on
nodes on a parallel computing system. Further, once such
tables are distributed, the resulting in-memory database can be
queried and each compute node can evaluate the records on that
node and return results.
Reply Br. 5. The determination of whether recitations or clauses introduced
by terms such as “wherein,” “whereby,” or, in the present appeal, “thereby”
result in affirmative claim limitations which are to be given patentable
weight depends on the specific facts of the case. See, e.g., Griffin v. Bertina,
285 F.3d 1029, 1034 (Fed. Cir. 2002) (finding that a “wherein” clause
limited a process claim where the clause gave “meaning and purpose to the
manipulative steps”). In re Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329
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(Fed. Cir. 2005), the court held that when a “‘whereby’ clause states a
condition that is material to patentability, it cannot be ignored in order to
change the substance of the invention.” Id. However, the court noted
(quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373,
1381 (Fed. Cir. 2003)) that a “whereby clause in a method claim is not given
weight when it simply expresses the intended result of a process step
positively recited.” Id.
Here, as in Minton, we find the clause that recites, “thereby creating
an in-memory database,” merely expresses the intended result of the
positively recited “distributing the remaining datasets,” such that we do not
give any patentable weight to the limitation. We therefore find Appellants’
arguments are not commensurate with the scope of the claims, as claim 1
does not require creating an in-memory database, or querying or evaluating
the records on any distributed node, nor does the claim require returning
results, as argued by Appellants.
Therefore, we agree with the Examiner’s findings and collective
teachings of the references cited above, as well as the Examiner’s legal
conclusion of obviousness.
Accordingly, Appellants have not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner’s reading of
the contested limitations on the cited prior art. Therefore, we sustain the
Examiner’s obviousness rejection of independent claim 1. As Appellants
have not provided separate arguments with respect to independent claims 10
and 19 or dependent claims 2-6, 8, 9, 11-15, 17, 18, 20-23, and 25, rejected
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on the same basis as independent claim 1, we similarly sustain the
Examiner’s rejection of these claims under 35 U.S.C. § 103(a).
§ 103(a) Rejection of Dependent Claims 7, 16, and 24
Appellants state dependent claims 7, 16, and 24 depend from one of
independent claims 1, 10, and 19, and that these dependent claims “are
allowable without the need for comment.” App. Br. 14.
Accordingly, we sustain the Examiner’s unpatentability rejection of
claims 7, 16, and 24 for the same reasons discussed above with respect to
independent claim 1.
CONCLUSION
The Examiner did not err with respect to the unpatentability rejections
of claims 1-25 under 35 U.S.C. § 103(a) over the combinations of prior art
of record, and we sustain the rejections.
DECISION
We affirm the decision of the Examiner to reject claims 1-25.
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) (2011).
AFFIRMED

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