Ex Parte Brenes et al

Patent Trial and Appeal BoardSep 9, 2013

11220882 (P.T.A.B. Sep. 9, 2013)

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. 11/220,882 09/06/2005 Mario Brenes 2005P04281US (S06.073) 5455 28062 7590 09/09/2013 BUCKLEY, MASCHOFF & TALWALKAR LLC 50 LOCUST AVENUE NEW CANAAN, CT 06840 EXAMINER AHLUWALIA, NAVNEET K ART UNIT PAPER NUMBER 2166 MAIL DATE DELIVERY MODE 09/09/2013 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 MARIO BRENES and JAMES ERIC O’HEARN ____________ Appeal 2011-002637 Application 11/220,882 Technology Center 2100 ____________ Before DENISE M. POTHIER, DAVID M. KOHUT, and BARBARA A. PARVIS, Administrative Patent Judges. PARVIS, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1–29 (App. Br. 1). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART and enter a new ground of rejection pursuant to our authority under 37 C.F.R. §41.50(b). Appeal 2011-002637 Application 11/220,882 2 STATEMENT OF THE CASE Appellants’ invention relates to systems for importing operations data into a class-based model. Spec. p. 1, ll. 10-11. Independent claims 1 and 5 are reproduced below with certain disputed limitations emphasized: 1. A method comprising: utilizing a first interface to query a data source using a first configuration and to return a first data set including a plurality of records, each of the plurality of records comprising data of a plurality of fields of the first data set; receiving the first data set from the data source; utilizing a second interface to query the data source using a second configuration and to return a second data set for each of the plurality of records, at least one field of the second configuration being associated with one of the plurality of fields of the first data set, each utilization using the received data of the one of the plurality of fields of a respective record that is associated with the at least one field of the second configuration; receiving a respective second data set from the data source for each utilization of the second interface; and populating a class-based component model with data of the respective second data sets, wherein the class-based component model represents tag- based data and non-tag-based data; and Appeal 2011-002637 Application 11/220,882 3 wherein the second data set includes a second plurality of records, each of the second plurality of records including data of a second plurality of fields. 5. A method according to claim 1, further comprising: utilizing a third interface to query the data source using a third configuration and to return a third data set for each of the plurality of records, at least one field of the third configuration associated with one of the second plurality of fields, each utilization using the received data of the one of the second plurality of fields of a respective record that is associated with the at least one field of the third configuration; receiving a respective third data set from the data source for each utilization of the third interface; and populating the class-based component model with data of the respective third data sets. REJECTION Claims 1–29 stand rejected under 35 U.S.C. § 102(e) as being anticipated by DeMesa (US 2005/0144154 A1; June 30, 2005). Ans. 3-17. THE CONTENTIONS Regarding independent claim 1, the Examiner finds that DeMesa’s description of collecting point data and non-point data discloses the claimed queries. Ans. 18; Final Rejection 2. The Examiner also finds that DeMesa’s mapping functionality and tag value connections disclose further details Appeal 2011-002637 Application 11/220,882 4 regarding the claimed queries. Ans. 18-19; Final Rejection 2-3. Regarding dependent claim 5, the Examiner finds that paragraphs 64 through 68 and 72 of DeMesa describing a plurality of tags and adding new tags disclose the claimed third interface to query a data source using a claimed third configuration and returning a third data set. Ans. 6. Appellants identify claim elements that Appellants argue are not disclosed by the cited art and argue that the Examiner does not provide an adequate explanation as to how the cited portions of DeMesa teach the recitations of claims 1 and 5. App. Br. 10-18; Reply Br. 4-7. For independent claims 11 and 21, Appellants present similar arguments to claim 1, and for claims 15, 23, and 27-29, Appellants present similar argument to claim 5. App. Br. 18-43. We group the claims below accordingly. ISSUE Claims 1–4, 6–14, 16–22, and 24–26 Did the Examiner err in finding that DeMesa discloses “each utilization using the received data of the one of the plurality of fields of a respective record that is associated with the at least one field of the second configuration” and “receiving a respective second data set from the data source for each utilization of the second interface,” as recited in independent claim 1, and commensurately recited in independent claims 11, 21, and 27– 29? Claims 5, 15, 23, and 27–29 Did the Examiner err in finding that DeMesa discloses: utilizing a third interface to query the data source using a third configuration and to return a third data set for each of the plurality of records, at least one field of the third configuration Appeal 2011-002637 Application 11/220,882 5 associated with one of the second plurality of fields, each utilization using the received data of the one of the second plurality of fields of a respective record that is associated with the at least one field of the third configuration, as recited in claim 5, and commensurately recited in claims 15, 23, and 27– 29? ANALYSIS We have reviewed the Examiner’s rejection in light of Appellants’ contentions in the Appeal Brief presented in response to the Final Office Action and the Reply Brief presented in response to the Examiner’s Answer. We agree with Appellants’ conclusion that the Examiner erred in rejecting claims 5, 15, 23, and 27–29. However, we enter new grounds of rejection with respect to claim 29 as further specified below. We disagree with Appellants’ remaining conclusions and highlight specific findings and arguments for emphasis as follows. Claims 1–4, 6–14, 16–22, and 24–26 We are not persuaded by Appellants’ arguments that the Examiner does not provide an adequate explanation as to how the cited portions of DeMesa teach the recitations of claim 1 (App. Br. 14-15, 21, 27). The Examiner copied specific quotes from DeMesa and included specific citations of DeMesa for the elements of claim 1. Ans. 18-19; Final Rejection 2-3. Additionally, Appellants’ identification of particular claim limitations along with an assertion that the identified elements are not found in the prior art (App. Br. 10-13, 18-21, 24-27) is not sufficiently persuasive. See 37 C.F.R. § 41.37(c) (noting that an argument that merely points out Appeal 2011-002637 Application 11/220,882 6 what a claim recites is unpersuasive). Accord In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[T]he Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”). Appellants further argue, “the Examiner’s Answer does not even attempt to address the recitation that each utilization using the received data of the one of the plurality of fields of a respective record that is associated with the at least one field of the second configuration; and receiving a respective second data set from the data source for each utilization of the second interface.” Reply Br. 4 (emphasis omitted). However, as the Examiner correctly finds, DeMesa’s description that a mapping functionality is used to associate fields 455 contained in the point data database 406 with selected component members 322 for appropriate tags 305 in the tag collection 310 . . . the point data information 110 may be acquired from the point table 406 using a tag value connection 320 . . . discloses “in detail . . . use of queries through an interface” (Ans. 18-19 (citing DeMesa ¶[0084]); see also Final Rejection 2-3). We agree with the Examiner’s finding that DeMesa’s description of acquiring point data from a point table using a tag value connection discloses the claimed use of associated received data in a second query, such that a second interface is used to query a data source using a second configuration (Ans. 18-19; Final Rejection 2-3). Additionally, we agree with the Examiner’s finding that DeMesa discloses the claimed receipt of a second data set (Ans. 19 (citing DeMesa ¶¶[0041], [0070], [0082]-[0087], [0116])). Appeal 2011-002637 Application 11/220,882 7 Thus, Appellants have not persuaded us of error in the Examiner’s rejection of independent claims 1, 11, and 21 under 35 U.S.C. § 102(e) as anticipated by DeMesa, and dependent claims 2–4, 6–10, 12–14, 16–20, 22, and 24–26, not separately argued (App. Br. 15, 21, 27). Accordingly, we sustain that rejection. Claims 5, 15, 23, and 27–29 Although we agree with the Examiner that DeMesa describes a plurality of tags and adding new tags to the system (Ans. 6), adding new tags in DeMesa is not necessarily done using the claimed third interface to query a data source using the claimed third configuration. We do not find that the Examiner’s findings provide disclosure of: utilizing a third interface to query the data source using a third configuration and to return a third data set for each of the plurality of records, at least one field of the third configuration associated with one of the second plurality of fields, each utilization using the received data of the one of the second plurality of fields of a respective record that is associated with the at least one field of the third configuration, as recited in claim 5. We are constrained by the record to reverse the Examiner’s anticipation rejection of claim 5 under 35 U.S.C. § 102 (e). Claims 15, 23 and 27–29 each recite a similar limitation and each are also rejected under 35 U.S.C. § 102 (e). Accordingly, for the same reason, we do not sustain the rejection of claims 5, 15, 23, and 27–29. Appeal 2011-002637 Application 11/220,882 8 NEW GROUND OF REJECTION OF CLAIM 29 UNDER 37 C.F.R. § 41.50(b) Under 37 C.F.R. § 41.50(b), we enter a new ground of rejection for claim 29 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Appellants’ Specification provides the following examples of a computer-readable medium, “a floppy disk, a CD-ROM, a DVD-ROM, a Zip TM disk, a magnetic tape, or a signal encoding the process steps, and then stored in a compressed, uncompiled and/or encrypted format.” Spec. p. 10, ll. 6-8. Thus, the computer-readable medium of claim 29 encompasses signals, which are not patentable subject matter. See In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). As specified by USPTO guidelines, claims must be amended to recite solely statutory subject matter. David J. Kappos, Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010); see also U.S. Patent & Trademark Office, Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. §101, at 2 (Aug. 2009), available at http://www.uspto.gov/web/offices/pac/dapp/opla/2009-08- 25_interim_101_instructions.pdf. DECISION We REVERSE the rejection of claims 5, 15, 23, and 27–29 under 35 U.S.C. § 102 (e). We AFFIRM the rejection of claims 1–4, 6–14, 16–22, and 24–26 under 35 U.S.C. § 102(e). A new ground of rejection is entered using our authority under 37 C.F.R. § 41.50(b) in which independent claim 29 is rejected under 35 U.S.C. Appeal 2011-002637 Application 11/220,882 9 § 101 as being directed to non-statutory subject matter. Section 41.50(b) provides that “[a] new ground of rejection . . . shall not be considered final for judicial review.” Section 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the proceeding will be remanded to the Examiner . . . . (2) Request rehearing. Request that the proceeding be reheard under §41.52 by the Board upon the same record. 37 C.F.R. § 41.50(b) (emphasis added). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b) ELD