Ex Parte De Bellis

Patent Trial and Appeal Board

Aug 30, 2017

11979255 (P.T.A.B. Aug. 30, 2017)

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.
11/979,255 10/31/2007 Joseph L. De Beilis 50970-86233 9516
7590
John K. Harrop
PO Box 320171
Alexandria, VA 22320
EXAMINER
LY, CHEYNE D
ART UNIT PAPER NUMBER
2152
MAIL DATE DELIVERY MODE
08/31/2017 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 JOSEPH L. DE BELLIS
Appeal 2016-002443
Application 11/979,2551
Technology Center 2100
Before BRUCE R. WINSOR, JON M. JURGOVAN, and
DAVID J. CUTITTAII, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 1—22, which constitute all the claims pending in this application. We
have jurisdiction under 35 U.S.C. § 6(b). Oral arguments were presented at
a hearing on August 1, 2017. A transcript of the hearing has been placed in
the record.
We affirm-in-part.
1 The real party in interest identified by Appellant is Vilox Technologies,
LLC. App. Br. 3.
Appeal 2016-002443
Application 11/979,255
STATEMENT OF THE CASE
Appellant’s invention relates to “information management systems,
interfaces, and mechanisms, and methods for searching one or more
databases.” Spec. 13. Claim 1, which is illustrative, reads as follows:
1. A method, executed on a suitably programmed
computing device, for managing data, the method comprising:
extracting, using a search engine, a plurality of data field
descriptors from a database of at least one data source,
comprising the search engine:
performing a preliminary database access function
to determine access to the database,
determining a schema of the database, and
determining available data fields of the database;
using the plurality of data field descriptors, developing a
data field result list upon which a query may be run, by:
displaying the plurality of data field descriptors
and control data from the at least one data source, the control
data comprising one or more of constraints, fields, keywords,
and truncations used for extracting the plurality of data field
descriptors from the database, and
saving the plurality of data field descriptors and
the control data as the data field result list;
receiving a user search request;
transforming the user search request into a dataset query
based on the data field result list by combining the user search
request with an API request;
communicating the dataset query to the at least one data
source;
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searching the database using the dataset query; and
managing, based on the data field result list, data from
the database.
The Examiner relies on the following prior art in rejecting the claims:
Cochran US 5,768,581 June 16, 1998
Kelliher et al. US 5,857,194 Jan. 5, 1999
Ellis et al. US 6,195,662 B1 Feb. 27, 2001
Yamall et al. US 2001/0020237 Al Sept. 6, 2001
Cochran (“Cochran I” hereinafter) incorporates the following prior art
by reference:
Cochran et al.2 US 4,879,648 Nov. 7, 1989
Cochran et al.3 US 5,206,949 Apr. 27, 1993
Claims 1 and 5—10 stand rejected under 35 U.S.C. § 103(a)4 as being
unpatentable over Cochran I and Kelliher et al. (“Kelliher” hereinafter). See
Final Act. 5—9.
Claims 2-A and 13—22 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Cochran I, Kelliher, and Ellis et al. (“Ellis”
hereinafter). See Final Act. 9—10.
2 “Cochran III” hereinafter.
3 “Cochran II” hereinafter.
4 All prior art rejections are under the provisions of 35 U.S.C. in effect prior
to the effective date of the Leahy-Smith America Invents Act of 2011. Final
Act 2.
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Claims 11 and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cochran I, Kelliher, and Yamall et al. (“Yamall”
hereinafter). See Final Act. 10—11.
Rather than repeat the arguments here, we refer to the Briefs (“App.
Br.” filed June 15, 2015; “Reply Br.” filed Nov. 10, 2015), Record
(transcript) of Oral Hearing (heard Aug. 1, 2017) (“Tr.” mailed Aug. 18,
2017), and the Specification (“Spec.” filed Oct. 31, 2007) for the positions
of Appellant and the Final Office Action (“Final Act.” mailed Nov. 7, 2014)
and Answer (“Ans.” mailed Sept. 23, 2015) for the reasoning, findings, and
conclusions of the Examiner. Only those arguments actually and timely
made by Appellant have been considered in this decision. Arguments that
Appellant did not timely make in the Briefs or in oral argument have not
been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2013).
ISSUES
The issues presented by Appellant’s arguments are as follows:
Does the combination of Cochran I and Kelliher teach or suggest
“extracting, using a search engine, a plurality of data field descriptors . . .
[by] determining available data fields of the data base” (the “extracting
limitation”) as recited in claim 1?
Does the combination of Cochran I and Kelliher teach or suggest that
“developing the data field result list comprises developing a dataset tree,” as
recited in claim 5?
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Does the combination of Cochran I and Kelliher teach or suggest that
“the at least one data source comprises a plurality of disparate data sources,”
as recited in claim 10?
ANALYSIS
Claim 1
Extracting Limitation
The Examiner relies on the combination of Cochran I and Kelliher to
teach the extracting limitation. Final Act. 5 (citing Cochran I, col. 7,11. 10—
21, col. 8.11. 40-60), 7 (citing Kelliher, col. 3,11. 9-12, col. 3,1. 61—col. 4,1.
21; Cochran I, Abstract). The Examiner explains as follows:
[Cochran I] . . . disclose[s] the argued limitation in
column 7, lines 10-21, e.g. plurality of list identifiers are
displayed, column 8, lines 40-60, e.g. database is then searched.
Further, Kelliher in view of [Cochran I] discloses an extraction
device executes the data extraction steps and extracts the data
from the legacy storage device and passes it to a Transmission
device which reformats this data according to a predetermined
format, contacts the service company by conventional
communications systems, and sends the data in the predefined
format to the service company (column 2, lines 36-42). Kelliher
discloses the search engine; performing a preliminary database
access function to determine access to the database (column 3,
lines 9-12, e.g. determines access order to key data fields that
must be accessed first before other data is accessed); determining
a schema of the database, and determining available data fields
of the database (column 3, line 61, to column 4, line 21, Data
Locator 17 will use type information of the domain fields to
recognize the data values that may be stored in a variety of
formats. For example, if the domain field is a date type, then Data
Locator 17 will look for matches in the form yyyyymmdd,
yymmdd, mmddyyyy, mmddyy, etc ... determine the schema,
defining the field names, the field types, the order of the fields).
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Final Act. 2.
Appellant contends that Cochran I, when read in light of Cochran II,
merely teaches displaying predetermined list identifiers, and does not teach
or suggest extracting the list identifiers using a search engine. App. Br. 18—
19, 22; see also Reply Br. 4—5. Appellant further contends that Kelliher’s
extraction device “feed[s] seed values to a legacy database and then
generat[es] a map of the seed value locations, and extract[s]data at the
mapped locations.” App. Br. 23 (citing Kelliher, col. 3,11. 8 — 10); see also
Reply Br. 2—3. Appellant continues “[t]his is far different than a search
engine determining available data fields upon which a search may be
conducted as required in claim 1.” Id. We are not persuaded of error.
Initially, we agree with Appellant that Cochran I must be read as
including Cochran II (and Cochran III), which was incorporated into
Cochran I by reference. See App. Br. 17—18. That said, however, we do not
agree that Cochran II precludes or teaches away from Cochran I using a
search engine to provide list identifiers. Indeed, the very passages quoted by
Appellant make clear that the use of the techniques of Cochran II in Cochran
I’s method is permissive and not limiting. “[Accessing of data from the
database ... so as to display list identifiers . . . may be done in accordance
with the system . . . described . . . in . . . Cochran [II].” Cochran I, col. 5,
11. 53—59 (emphasis added) (quoted at App. Br. 18). “The step of
providing the list identifiers may be accomplished in the same manner as
described in the Cochran [II [and III]] patents, which have been incorporated
by reference above.” Cochran I, col. 7,11. 18—22 (emphasis added) (quoted
at App. Br. 18 (emphasis omitted)). Because use of the teachings of
Cochran II in Cochran I’s method is permissive and not limiting, the
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Examiner did not err in relying on the disclosure of Cochran I, unmodified
by the disclosure of Cochran II.
Appellant contends “there is nothing in Kelliher that discloses or
suggests determining or extracting data field descriptors.” Reply Br. 3.
Cochran I teaches determining list descriptors and Kelliher teaches
determining, inter alia, access order to data fields, data names, data types,
and field types. See Final Act. 2. All of these items describe the data fields
of the data base. Therefore, we conclude that list descriptors, access order to
data fields, data names, data types, and field types fall within the broadest
reasonable interpretation of “data field descriptors,” as recited in the
extracting limitation of claim 1.
Appellant concedes that Kelliher teaches using a search engine to
obtain information describing the fields of a database. Tr. 6:24—7:1.
Appellant asserts, but does not persuasively explain why, Kelliher’s search
engine that works by inserting seed values into a database to be analyzed is
precluded by the language of claim 1. See App. Br. 23. Appellant contends
the combination of Cochran I and Kelliher would simply extract
data from claim 1 ’s database, but only after a user had provided
a set of seed values to be mapped to the database fields.
Appellant’s claim 1 method does not require such a seeding step;
in fact, Appellant's claim 1 method requires no user conditional
step (e.g., seeding).
App. Br. 24. Appellant does not identify, nor do we find, language in claim
1 that would preclude the claimed search engine from incorporating a user
conditional step such as Kelliher’s seeding step. Claim 1 utilizes the open-
ended transition term “comprising.” “‘Comprising’ is a term of art used in
claim language which means that the named elements are essential, but other
elements may be added and still form a construct within the scope of the
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claim.” Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997)
(citation omitted). “The word ‘comprising’ transitioning from the preamble
to the body signals that the entire claim is presumptively open-ended.”
Gillette Co. v. Energizer Holdings Inc., 405 F.3d 1367, 1371 (Fed. Cir.
2005) (citations omitted). See also MPEP § 2111.03 (8th ed. 2001, rev.
2012). Furthermore, although we give claims their broadest reasonable
interpretation consistent with the Specification, In re Am. Acad, of Sci. Tech.
Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004), “limitations are not to be read
into the claims from the [Specification.” In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993).
Therefore, that Cochran I may or may not teach a search engine does
not persuade us of error in view of the Examiner’s cumulative finding that
Kelliher teaches a search engine that “extracts]. . . data field descriptors.”
See Ans. 4—5. “[0]ne cannot show non-obviousness by attacking references
individually where, as here, the rejections are based on combinations of
references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981).
Appellant contends “nothing in Kelliher discloses or suggests a
‘search engine ... determining available data fields of the database,’ as
required by Appellant’s claim[] 1.” Reply Br. 3 (discussing Kelliher, col. 3,
1. 61—col. 4,1. 21). Kelliher teaches “defining the field names” (Kelliher,
col. 4,1. 10), which one of ordinary skill in the art would understand to
include determining that the named field is an “available data field[] of the
database,” as recited in claim 1.
Untimely Arguments
Appellant contends the combination of Kelliher with Cochran I would
result in an inoperable system. Tr. 6:3-4 (“[Tjhat’s what would happen if
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you were to combine Kelliher with Cochran. You’d get something that just
doesn’t work.”) Appellant further contends that Kelliher does not teach
“performing a preliminary database access function to determine access to
the database,” as recited in claim 1. Tr. 6:10-22. We are unable to find
these arguments in either the Appeal Brief or the Reply Brief. Contra
Tr. 6:6—8. They were, therefore, placed before us for consideration for the
first time at oral argument.
Arguments not presented in the Appeal Brief, but presented for the
first time in the Reply Brief or at oral argument cannot be considered. See
37 C.F.R. §§ 41.41(b)(2), 41.47(e)(1); Ex parte Borden, 93 USPQ2d 1473,
1477 (BPAI2010) (informative) (“Properly interpreted, the Rules do not
require the Board to take up a belated argument that has not been addressed
by the Examiner, absent a showing of good cause.”) (discussing arguments
raised for the first time in a reply brief). Were we to consider such newly
raised arguments, “[rjather than reviewing a record for error, the Board
would be considering, in the first instance, findings of fact proposed by the
Appellants], but not weighed by the Examiner [in the Examiner’s Answer]
against the other evidence of record.” Borden, 93 USPQ2d at 1475.
Accordingly, we cannot consider these newly raised and untimely
arguments. We note that the fact that these untimely arguments may have
been raised at an earlier stage of prosecution would be unavailing. We
review the appealed rejections for error based upon the issues identified by
Appellant in the briefs, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
In the absence of good cause shown, such as responding to new positions
taken by the Examiner, or to bring to our attention intervening decisions of
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the courts or other panels of this Board, in this appeal proceeding we only
consider those arguments first raised in the Appeal Brief. See 37 C.F.R.
§§ 41.41(b)(2), 41.47(e)(1).
Summary
We have considered the rejection of claim 1 in light of the arguments
and evidence adduced by Appellant and find no error in the rejection of
claim 1. Independent claim 13 is argued based on its similarity to claim 1.
See App. Br. 27. Claims 2-4, 6—9, 12, and 16—22 variously depend, directly
or indirectly, from claims 1 and 13 and were not separately argued with
particularity. App. Br. 25—27. Accordingly, we sustain the rejections under
§ 103(a) of claims 1—4, 1—9, and 12—22.
Claim 5
The Examiner finds Cochran I teaches a “data field result list” that is a
“dataset tree.” Final Act. 7 (citing Cochran I, Figs. 3a—d). Appellant
contends “all that Figures 3a - 3d [of Cochran I] present are pre-determined
list identifiers in a simple menu format. Thus, Figures 3a - 3d do not
anticipate the elements of claim 5, and claim 5 is patentable.” App. Br. 25.
We are not persuaded of error. We have addressed the Appellant’s
contention that Cochran I’s are limited to pre-determined list identifiers
above. Appellant does not explain why the recited “dataset tree” (claim 5)
precludes Cochran I’s “simple menu format” (App. Br. 25).
For emphasis only, we note that, cumulatively with Cochran I,
Kelliher discloses “determining] access order to key data fields that must be
accessed first before other data is accessed” (Kelliher, col, 3,11. 10-12)
which also teaches a “data field result list” that is a “dataset tree,” as recited
in claim 5.
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Claim 10
The Examiner finds Cochran I teaches “the at least one data source
comprises a plurality of disparate data sources,” as recited in claim 10. Final
Act. 9 (citing Cochran I, col, 6,11. 57—58, col. 8,11. 58—60). Appellant
contends as follows:
[TJhere is nothing in Cochran I to teach or suggest that the travel
service data base includes a plurality of disparate data sources
(i.e., disparate databases). In fact, Cochran I discloses one and
only one database (or data source). Furthermore, simply reciting
a large number of data elements does not reasonably mean the
data elements were derived or obtained from “disparate data
sources.”
App. Br. 26. The Examiner explains a follows:
[CJlaim 10 recites “disparate data sources” not the asserted
“database.” Therefore, the cited disclosure of “consists of
database records of more than 13,000 hotels, resorts, and inns”
(column 6, lines 57-58, and column 8, lines 58-60) reasonably
anticipates the claim limitation of “the at least one data source
comprises a plurality of disparate data sources.”
Ans. 7.
We agree with the Appellant. Terms in claims are given their
broadest reasonable interpretation consistent with the Specification, In re
Am. Acad, of Sci. Tech. Ctr., 367 F.3d at 1369, however, “limitations are not
to be read into the claims from the [Specification.” In re Van Geuns, 988
F.2d 1181, 1184 (Fed. Cir. 1993). Claim 1, from which claim 10 depends,
recites extracting data field descriptors from “a database of at least one data
source.” The phrase “data source” is not used in Appellant’s written
description, but does appear in the claims as filed. As used in claim 1, as
amended, the “data source” is a locus of the recited “database” and not an
origin of the data in the database. See App. Br. 29-30 (Claims App’x) (e.g.,
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“communicating the dataset query to the at least one data source”). We find
nothing in claim 1, as filed, that is inconsistent with this interpretation. See
Spec. 24 (claim 1). Therefore, we conclude that to meet claim 10’s
recitation of a “disparate data sources” the Examiner must show disparate
loci of databases. Here the Examiner has shown a plurality of data origins
(e.g., “records of more than 13,000 hotels, resorts, and inns”) (Cochran I,
col. 6,11. 57-58) for the data in a single database at a single locus, i.e., a
single data source, not “disparate data sources.”
Because the rejection of claim 10 is based on an unreasonably broad
construction of “data source,” we do not sustain the rejection of claim 10, or
of claim 11, which depends from claim 10.
DECISION
The decision of the Examiner to reject claims 1—9 and 12—22 is
affirmed.
The decision of the Examiner to reject claims 10 and 11 is reversed.
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). See 37 C.F.R.
§§ 41.50(f), 41.52(b) (2013).
AFFIRMED-IN-PART
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