Ex Parte Dettinger et al

Patent Trial and Appeal Board

Oct 31, 2012

10860414 (P.T.A.B. Oct. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RICHARD D. DETTINGER, THOMAS J. EGGEBRAATEN and
JEFFREY W. TENNER
____________________

Appeal 2010-006024
Application 10/860,414
Technology Center 2100
____________________

Before DEBRA K. STEPHENS, DAVID M. KOHUT and HUNG H. BUI,
Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 11-16 and 26-30.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter new
grounds of rejections. We reject claim 16 under 35 U.S.C. § 101 and
separately, reject claim 26 under 35 U.S.C. § 101.

1 Real Party in Interest is International Business Machines Corporation.
Appeal Brief filed October 13, 2009 (“App. Br.”).
2 Claims 1-10, 17-25 and 31 are cancelled and are not on appeal.
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I. STATEMENT OF THE CASE
Appellants’ Invention
Appellants claims are generally directed to a method and a computer
database management system for constructing queries capable of returning
classified information related to data in a database. See generally Summary,
Spec. ¶0009.
Claims on Appeal
Claims 11, 16, and 26 are independent. Claim 11 is representative
and is reproduced below with disputed limitations emphasized:

11. A computer-implemented method for constructing
queries capable of returning classified information related to
data in a database, the method comprising:

configuring one or more processors to perform an
operation comprising:

receiving user input specifying a plurality of
result fields for an abstract query, each corresponding to
a logical field specification of a data abstraction model
abstractly describing the data in the database;

receiving user input selecting one of the plurality
of result fields;

receiving user input specifying a classification
definition for the selected result field, the classification
definition being suitable for dividing data to be returned
for the selected result field into a plurality of categories;

generating a classification field for the abstract
query on the basis of the selected result field and the
classification definition;

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including the classification field with the abstract
query; and

receiving a user request for execution of the
abstract query against the database.

Similarly, claim 16 is also representative and is reproduced
below with disputed limitations emphasized:

16. A computer-implemented method for executing
queries capable of returning classified information related to
data in a database, the method comprising:

configuring one or more processors to perform an
operation comprising:

receiving an abstract query including:

(i) a plurality of result fields, each corresponding
to a logical field specification of a data abstraction model
abstractly describing the data in the database; and
(ii) at least one classification field, the at least one
classification field corresponding to a logical field of the
data abstraction model being associated with a specific
set of the data, each classification field having a
corresponding classification definition for classifying the
specific set of the data according to a plurality of
categories; and

transforming the abstract query into a concrete query for
execution against the database;

executing the concrete query against the database to
obtain a query result; and

displaying the query result, wherein data obtained for
the at least one classification field is classified according to the
corresponding classification definition.

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Evidence Considered
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Inohara U.S. 6,757,670 B1 Jun. 29, 2004
Stolte U.S. 2004/0243593 A1 Dec. 2, 2004

Examiner’s Rejections
(1) Claims 11, 12, 14, 16, 26, 27, and 29 stand rejected under
35 U.S.C. § 102(e) as being anticipated by Inohara (Ans. 3-6); and
(2) Claims 13, 15, 28, and 30 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Inohara in view of Stolte
(Ans. 6-8).

II. ISSUES
The dispositive issues on appeal are:
(1) Did the Examiner err in finding that Inohara discloses all
limitations of claims 11, 12, 14, 16, 26, 27, and 29 under 35 U.S.C. §102(e)?
(2) Did the Examiner err in finding that the combination of Inohara
and Stolte renders claims 13, 15, 28, and 30 obvious under 35 U.S.C.
§103(a)?

III. ANALYSIS
We have reviewed Appellants’ arguments in the Briefs, the
Examiner’s rejections and the Examiner’s responses to Appellants’
arguments. However, we are not persuaded by Appellants’ arguments and
conclusions with respect to claims 11 and 26 and their dependent claims 12-
15, 27 and 29-30. We adopt as our own (1) the findings and reasons set
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forth by the Examiner in the Final Office Action mailed June 10, 2009 (O.A.
2-4, 7-8) and (2) the detailed findings and responses set forth by the
Examiner in the Examiner’s Answer in response to each of the arguments
raised by Appellants in the Appeal Brief (Ans. 4-5, 8-10). We concur with
the conclusions reached by the Examiner with respect to claims 11 and 26
and their dependent claims 12-15, 27 and 29-30. We are persuaded by
Appellants’ arguments and conclusions with respect to independent claim
16. Nevertheless, we issue a new ground of rejection of independent claim
16 under 35 U.S.C. § 103(a) as being unpatentable over Inohara, and a new
ground of rejection of independent claim 26 under 35 U.S.C. § 101 as
directed to unpatentable subject matter. In addition, we further highlight for
emphasis the following:

§102 Rejection of Claims 11, 12, 14, 16, 26, 27 and 29 in view of Inohara

With respect to independent claims 11 and 26, Appellants contend3
that Inohara does not disclose a “method for constructing queries capable of

3 Appellants do not contest the Examiner’s findings regarding
limitations “generating a classification field for the abstract query on the
basis of the selected result field and the classification definition”, “including
the classification field with the abstract query”, and “receiving a user
request for execution of the abstract query against the database” as defined
in claims 11 and 26 (see App. Br. 11-14; Rep. Br. 3-7). As such, we accept
them as fact. See Ex Parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(citing In re Oetiker, 977 F.2d. 1443, 1445 (Fed. Cir. 1992)) (explaining that
the BPAI reviews the appealed rejections for error based upon the issues
identified by an Appellant, and in light of the arguments and evidence
produced thereon). See also Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir.
2008) (explaining that a ground of rejection is waived when an Appellant
fails to contest the rejection and that the Board is free to affirm such an
uncontested rejection without considering the merits).
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returning classified information related to data in a database” as defined in
claims 11 and 26 that includes:
 receiving user input selecting one of the plurality of result
fields; and
 receiving user input specifying a classification definition for the
selected result field, the classification definition being suitable
for dividing data to be returned for the selected result field into
a plurality of categories.
App. Br. 11.
In particular, Appellants argue that Inohara is only directed to a
method “for query processing including an optimization controller,
responding to a query from an application related to a database, and
controlling optimization processing of the query.” App. Br. 11. According
to Appellants, the “query classification definition” 310 used by the
optimization controller 214, as shown in FIG. 3 of Inohara, is different from
Appellants’ claimed “classification definition” because:
the claimed ‘classification definition’ specifies how
query results should be altered and presented to a user in
order to group data returned for the ‘selected result field’
into a plurality of categories, whereas the ‘query
classification definition’ specifies general attitudes used
to classify a query, and based on the classification, use
certain query optimization strategies to execute that
query.

App. Br. 13 (emphasis in original).
However, we are not persuaded by Appellants’ arguments. First, we
find such arguments are not based on limitations that appear in the claim
and, as such, are not commensurate with the scope of the claim. Nowhere in
either Appellants’ claim 11 or Appellants’ claim 26 is there any limitation of
how query results should be altered and presented to a user in order to group
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data returned for the “selected result field” into a plurality of categories, as
argued by Appellants. Instead, Appellants’ claims 11 and 26 simply define,
inter alia: “receiving user input specifying a classification definition for the
selected result field, the classification definition being suitable for dividing
data to be returned for the selected result field into a plurality of categories.”
However, the word “suitable” is conditional and, as defined by Webster’s
New World Dictionary, 3rd College Edition, simply refers to “that suits a
given purpose, occasion, condition, propriety, etc.” As such, Appellants’
claimed “classification definition” needs not be used “for dividing data to be
returned for the selected result field into a plurality of categories” as defined
by independent claims 11 and 26, but rather the “classification definition”
must be suitable for the stated purpose. Therefore, Inohara’s disclosure that
the query operation direction matches the query according to the query
classification definition indicates “the classification definition being suitable
for dividing data to be returned for the selected result field into a plurality of
categories” (see col. 7, ll. 59-65). Moreover, we agree with the Examiner’s
finding that the dividing of data can be accomplished by the query operation
direction of Inohara, which applies functions such as join, merge, and group
in order to gain desired values from a designated result set. Ans. 9.
Second, claim terms must be given their “broadest reasonable
interpretation” consistent with the specification. In re Hyatt, 211 F.3d 1367,
1372 (Fed. Cir. 2000). Given its "broadest reasonable interpretation"
consistent with the specification, we agree with the Examiner (Ans. 9-10)
that the disputed limitation of independent claims 11 and 26 reads on
Inohara’s method of processing user queries according to query
classification definition 310, shown in FIG. 3 of Inohara.
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In view of these reasons and explanations, we will sustain the
Examiner’s anticipation of independent claims 11 and 26 and their
respective claims 12-14, 27, and 29, which were not separately argued.
With respect to independent claim 16, Appellants further contend that
Inohara does not disclose a “method for executing queries capable of
returning classified information related to data in a database" that includes:
 receiving an abstract query including: (i) a plurality of result
fields … and (ii) at least one classification field… having a
corresponding classification definition for classifying the
specific set of the data according to a plurality of categories;
and …
 displaying the query result, wherein data obtained for the at
least one classification field is classified according to the
corresponding classification definition.

App. Br. 14-15; Rep. Br. 7-8.
We disagree with Appellants’ contention that Inohara does not
disclose the “classification field… having a corresponding classification
definition for classifying the specific set of the data according to a plurality
of categories,” as recited in claim 16. As broadly interpreted by the
Examiner, Appellants’ claimed “classification field” and “corresponding
classification definition” read on items of the classification definition 310, as
shown in FIG. 3 of Inohara, including, for example:
the application name 313, the application type 314, the
user name or the user organization name, the name of
access target DB server 316, the type of access target DB
server 317, the name of access target network 318, the
type of access target network 319, and time at which the
query has been received.

See col. 14, ll. 57-63 of Inohara.

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However, we agree with Appellants’ contention that nowhere in the
cited portion of Inohara (Ans. 6; Inohara col. 18, ll. 9-25; col. 20, ll. 17-24
and ll. 41-55), is there any disclosure of the feature “displaying the query
result, wherein data obtained for the at least one classification field is
classified according to the corresponding classification definition,” as
recited in claim 16. Rather, the cited col. 18, ll. 9-25; col. 20, ll. 17-24 and
ll. 41-55 of Inohara describe how a DBMS may process a given query using
a query execution plan, which refers to a sequence of operations performed
internally by the DBMS. Ans. 15. Therefore, Inohara does not describe
“displaying the query.”
“Anticipation of a claim under § 102 can be found only if the prior art
reference discloses every element of the claim.” See In re King, 801 F.2d
1324, 1326 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik GMBH v.
Am. Hoist & Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir. 1984)).
“[A]bsence from the reference of any claimed element negates anticipation.”
Kloster Speedsteel AB v. Crucible Inc., 793 F.2d 1565, 1571 (Fed. Cir 1986).
Absence of a disclosure of the feature “displaying the query result,
wherein data obtained for the at least one classification field is classified
according to the corresponding classification definition” from Inohara, we
cannot and will not sustain the Examiner’s anticipation rejection of claim 16
under 35 U.S.C. § 102(e).

§103 Rejection of Claims 13, 15, 28, and 30 over Inohara and Stolte

With respect to dependent claims 13, 15, 28, and 30, Appellants
present no arguments for patentability of these claims separately from
independent claims 11 and 26. App. Br. 1 and 4. As such, claims 13, 15, 28,
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and 30 fall with independent claims 11 and 26. See 37 C.F.R.
§ 41.37(c)(1)(vii) (stating that “the failure of appellant to separately argue
claims which appellant has grouped together shall constitute a waiver of any
argument that the Board must consider the patentability of any grouped
claim separately”). We will, therefore, sustain the Examiner’s obviousness
rejection of claims 13, 15, 28, and 30.

IV. NEW GROUND OF REJECTION
New §103 Rejection of Claim 16 under 37 C.F.R. §41.50(b)
Using our authority under 37 C.F.R. §41.50(b), we reject claim 16
under 35 U.S.C. § 103(a) as being unpatentable over Inohara based on the
following reasons.
First, we adopt as our own (1) the Examiner’s findings relative to
claim 16 as outlined in the Final Office Action mailed June 10, 2009, and
the Examiner’s Answer in response to each of the arguments raised by
Appellants in the Appeal Brief, except for the feature “displaying the query
result, wherein data obtained for the at least one classification field is
classified according to the corresponding classification definition,” as
recited in claim 16.
We conclude that it would have been obvious to one skilled in the art
to display the query result after the query is processed and optimized by
Inohara since displaying the query result is not “uniquely challenging or
difficult for one of ordinary skill in the art.” Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418). Data obtained from the query result for at least one
classification field is also classified as per classification definition 310, as
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shown in FIG. 3 of Inohara. Also see col. 14, ll. 57-63 of Inohara. Thus, it
is obvious to implement the feature “displaying the query result, wherein
data obtained for the at least one classification field is classified according
to the corresponding classification definition” in the context of query
optimization as disclosed by Inohara in order to arrive at Appellants’ claim
16.
In view of these reasons, we conclude that claim 16 is unpatentable
under 35 U.S.C. § 103(a) over Inohara.

New §101 Rejection of Claim 26 under 37 C.F.R. §41.50(b)
We further reject claim 26 under 35 U.S.C. § 101 as directed to
unpatentable subject matter based on two separate rationales.
First, claim 26 is directed to a “computer-readable storage medium”
including “a program … performs a process for constructing queries capable
of returning classified information related to data in a database.” No other
elements besides the computer readable medium are recited. In the
Specification, page 9, paragraph [0032], Appellants define a signal-bearing
media, when carrying computer-readable instructions, as including “a
communication medium, such as through a computer or telephone network,
including wireless communications. … information downloaded from the
Internet and other networks” or “signal-bearing media.” Thus, in light of
the Specification, we find Appellants’ invention is directed to transitory
propagating signals.
Signals are unpatentable under § 101. See In re Nuijten, 500 F.3d
1346, 1355 (Fed. Cir. 2007) (transitory embodiments are not directed to
statutory subject matter) and Interim Examination Instructions for
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Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101, p. 2 (Aug. 24,
2009), available at http://www.uspto.gov/web/offices/pac/dapp/opla/2009-
08-25_interim_101_instructions.pdf (emphasis in original) (“Interim
Instructions”). Also see David J. Kappos, Subject Matter Eligibility of
Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010).
In view of In re Nuijten and USPTO’s position regarding In re
Nuijten, we conclude claim 26 is directed toward non-statutory subject
matter under 35 U.S.C. § 101. However, we decline to reject every claim, or
even every independent claim, under our discretionary authority under 37
C.F.R. § 41.50(b). As such, we emphasize that our decision does not mean
that the remaining claims are patentable. Rather, we merely leave the
patentability determination with respect to the remaining claims to the
Examiner. See MPEP § 1213.02.

V. CONCLUSION
On the record before us, we conclude that the Examiner erred in
rejecting claim 16 under 35 U.S.C. § 102(e) as being anticipated by Inohara;
however, the Examiner did not err in rejecting (1) claims 11, 12, 14, 26, 27,
and 29 under 35 U.S.C. § 102(e) as being anticipated by Inohara; and (2)
claims 13, 15, 28 and 30 under 35 U.S.C. § 103(a) as being unpatentable
over Inohara in view of Stolte.

VI. DECISION
As such, we reverse the Examiner’s decision to reject claim 16;
however, we affirm the Examiner’s rejections of claims 11-15 and 26-30
under 35 U.S.C. § 102(e) and § 103(a).
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Pursuant to our authority under 37 C.F.R. § 41.50(b), we newly reject
claim 16 under 35 U.S.C. § 103(a) as being unpatentable over Inohara. In
addition, we also newly reject claim 26 under 35 U.S.C. § 101, as directed to
non-statutory subject matter.
Rule 37 C.F.R. § 41.50(b) states that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Further, § 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 grounds 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. . . .
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)

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