Ex Parte Dutt et al

Patent Trial and Appeal Board

Dec 19, 2012

10655346 (P.T.A.B. Dec. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BALA DUTT, AJAY KUMAR, VENUGOPAL RAO K.,
SANKARA R. BHOGI, and SRINIVASAN KANNAN1
____________

Appeal 2010-007336
Application 10/655,346
Technology Center 2400
____________

Before DENISE M. POTHIER, JENNIFER L. McKEOWN,
and JAMES B. ARPIN, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-23. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.

1 Sun Microsystems, Inc. is the real party in interest.
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Nevertheless, pursuant to our authority under 37 C.F.R. § 41.50(b),
we enter a new ground of rejection. We reject claim 18 under 35 U.S.C.
§ 101.
INVENTION
Appellants’ invention relates to computer systems in which an
application server associates an identity with each data source included in
such systems. See generally Spec. ¶ [0009]. The computer system may
include several backend systems, each including one or more data resources,
and the identity of a data source may be unique to a data resource. Id. The
identity of a data source may include one or more data source configuration
parameters, such as the database name, uniform resource locator (URL), and
user name. Id. The invention further relates to methods, in which identities
are associated with such data sources, and computer accessible media storing
instructions for performing such methods. Claim 1 is reproduced below
with a key disputed limitation emphasized:
1. A system, comprising:
an application server; and
one or more of backend systems coupled to the application server;
wherein the one or more backend systems comprises a plurality of
distinct data resources;
wherein the application server comprises:
an application configured to initiate requests for connections
with the plurality of distinct data resources;
a plurality of data sources configured to provide connections
with the plurality of distinct data resources; and
wherein the application server is configured to associate an
identity with each of the plurality of data sources and to use the
identity to determine whether one of the plurality of data
sources provides connections to the same data resource as
another of the plurality of data sources, wherein each identity is
unique to one of the plurality of distinct data resources, and
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wherein multiple ones of the data sources have the same
identity.
The Examiner relies on the following references as evidence of
unpatentability:
Ng
Yousefi’zadeh
Felt
US 6,411,956 B1
US 2004/0030739 A1
US 7,080,119 B2
Jun. 25, 2002
Feb. 12, 20042
Jul. 18, 20063
THE REJECTIONS
1. The Examiner rejected claims 1-5, 8-12, 15-18, and 21-23 under 35
U.S.C. § 103(a) as unpatentable over Ng and Felt. Ans. 3-7.4
2. The Examiner rejected claims 6, 7, 13, 14, 19, and 20 under 35 U.S.C.
§ 103(a) as unpatentable over Ng, Felt, and Yousefi’zadeh. Id. at 7-8.

OBVIOUSNESS REJECTION OVER NG AND FELT
Regarding illustrative claim 1, the Examiner finds that Ng teaches or
suggests all of the limitations of claim 1, except that “Ng does not disclose
expressly the use of distinct data resources and use of an identifier to
delegate the task to a [sic] distinct data sources.” Ans. 4. The Examiner
finds, however, that Felt teaches the delegation of a commit server and a
participating server from a plurality of servers to fulfill a client’s request in a
Java DataBase Connectivity (JDBC) environment. Id. (citing Felt, col. 8, l.
60–col. 9, l. 14). The Examiner applies these findings to reject the
remaining independent claims 12, 17, 18, and 23. Id.

2 Yousefi’zadeh was filed August 6, 2002.
3 Felt was filed on July 15, 2002.
4 Throughout this opinion, we refer to (1) the Appeal Brief (App. Br.) filed
October 2, 2009; (2) the Examiner’s Answer (Ans.) mailed January 15,
2010; and (3) the Reply Brief (Reply Br.) filed March 15, 2010.
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Appellants raise two arguments in response to the Examiner’s
rejection of claim 1. First, Appellants argue that neither Ng nor Felt teaches
or suggests that each associated identity is unique to one of the plurality of
distinct data resources and that multiple ones of the data sources have the
same identity. App. Br. 12-14; Reply Br. 6-8. Second, Appellants argue
that the Examiner fails to provide an apparent reason to combine Ng and Felt
to achieve the claimed invention. App. Br. 14-15; Reply Br. 8-10. We are
persuaded by Appellants’ arguments.
ISSUES
(1) Under § 103, has the Examiner erred in rejecting claim 1 by
finding that Ng and Felt, collectively, would have taught or suggested an
application server configured to associate
an identity with each of the plurality of data sources and to use
the identity to determine whether one of the plurality of data
sources provides connections to the same data resource as
another of the plurality of data sources, wherein each identity is
unique to one of the plurality of distinct data resources, and
wherein multiple ones of the data sources have the same
identity[?]
(2) Is the Examiner’s reason to combine the teachings of these
references supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion?
ANALYSIS
We begin by construing the key disputed limitation of claim 1. Claim
1 recites, in pertinent part, that the application server associates “an identity
with each of the plurality of data sources and [uses] the identity to determine
whether one of the plurality of data sources provides connections to the
same data resource as another of the plurality of data sources.” Referring to
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Figure 1, Appellants describe that an application server 140 may include
application programs 100, a data source ID manager 130, data source objects
150, 152, and 154, and data source properties 160. Spec. ¶ [0023]; see also
Spec. ¶ [0047] (describing application servers in the context of banking
transactions). In the example of Figure 1, data source ID manager 130 may
determine the identity of the data sources (id. at ¶ [0027]), and, as described
in claim 1, data sources, such as data source objects 150, 152, and 154,
provide connections with the plurality of distinct data resources. Data
sources may be JDBC DataSources and are described as “connection
factories” through which connections to distinct data resources, e.g.,
databases 180 and 184 (see id. at ¶ [0006] (describing a human resources
database in a backend system)), may be provided. Id. at ¶ [0024]; see also
Spec. ¶ [0004].
An identity may be defined by a subset of properties that are used to
configure the data source. Id. at ¶¶ [0011], [0025]. For example, referring
to Figure 4, identity 200 may include a subset of the information fields of
data source entry 210. Id. at ¶¶ [0037]-[0038].
Claim 1 further recites that “each identity is unique to one of the
plurality of distinct data resources” and “multiple ones of the data sources
have the same identity” (emphases added). Referring again to Figure 1,
Appellants depict data source identity 190, which is associated with each of
data sources 150 and 152, but which is unique5 to database 180 in backend
system 170. Id. at ¶ [0027]. Thus, we construe this claim to require that the

5 A pertinent definition of the word, “unique,” is “existing as the only one or
as the sole example.” RANDOM HOUSE WEBSTER’S COLLEGE DICTIONARY,
1426 (2d Random House ed. 1999).
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identity is associated with multiple data sources, but that any identity only
identifies with a single database.
The Examiner finds that Felt teaches the use of a single identity with a
Transaction manager that delegates tasks to multiple Resource managers.
Ans. 9 (citing Felt, col. 6, ll. 30-42). In particular, Felt indicates that a
Transaction manager
manages transactions on behalf of application programs. A
transaction manager coordinates commands from application
programs to start and complete transactions by communicating
with all resource managers that are participating in those
transactions. When resource managers fail during transactions,
transaction managers help resource managers decide whether to
commit or roll back pending transactions
and that a Resource manager “provides access to a collection of information
and processes.” Felt, col. 6, ll. 30-38, 41-42. Moreover, Felt describes
databases as examples of Resource managers which provide access to
information and processes. Id. at ll. 15-17.
The Examiner finds that “Felt discloses a [sic] multiple data sources
or Resource Managers are accessed through a single Transaction Manager.”
Ans. 9 (emphasis added). Moreover, in the Advisory Action, the Examiner
explained that: “Felt teaches the use of data transaction between either single
or multiple data source servers. The transaction manager works with
resource managers to provide access to a collection of database resources,
which has the same function of determining unique data sources as claimed
(see column 6 line 30-42).” Advisory Action 2 (Oct. 30, 2008) (emphasis
added). Thus, the Examiner incorrectly equates data sources and Resource
managers, e.g., databases. Appellants distinguish between data sources,
which provide connections with data resources, e.g., databases. See Reply
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Br. 6-7. According to claim 1, a single identity is associated with multiple
data sources, but is “unique” to a data resource. Moreover, because
resource managers may be databases, the Examiner fails to demonstrate that
“resource managers . . . provide access to a collection of database
resources.” Therefore, we are persuaded that the Examiner has failed to
demonstrate that Ng and Felt teach or suggest the key disputed limitation.
Appellants also argue that the Examiner’s combination of Ng and Felt
would render Ng’s system unsuitable for its intended purpose and would not
have been obvious. We agree.
The Examiner finds that “Felt teaches the delegation of a commit
server and participating server from a plurality of servers to fulfill the
request of the client request in a JDBC environment (see selecting a commit
server and participating server on column 8 line 60 to column 9 line 14).”
Ans. 4. Thus, Felt describes a two-phase commit protocol, such as that
found in the JDBC 2.0 driver. See Ng, col. 1, ll. 31-33. Appellants note that
“Ng’s teachings are specific to systems not supporting JDBC 2.0 with its
Standard Extension API support for distributed transactions using the
standard two-phase commit protocol.” App. Br. 14; see also Reply Br. 9.
According to Ng,
[s]upport for the JDBC 2.0 Standard Extension API,
however, is optional and many databases only provide JDBC
1.0 drivers. The JDBC 1.0 drivers do not include distributed
transaction support as defined in the JDBC 2.0 Standard
Extension. It would thus be desirable to provide limited
distributed transaction support using JDBC 1.0 drivers, without
the need for a JDBC 2.0 Standard Extension compatible driver.
Ng, col. 1, ll. 44-51 (emphasis added). Consequently, Ng provides an
adapter which provides “an interim solution that will provide limited
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distributed transaction support using existing JDBC 1.0 drivers.” Id. at col.
3, ll. 30-34 (emphasis added); see App. Br. 14; Reply Br. 8.
The Examiner finds that “Ng clearly discloses both JDBC 1.0 and 2.0
connectivity protocol are well known and expected in the art for JDBC
connectivity and thus could easily be interchanged for respective desired
uses.” Ans. 9 (emphasis added). Nevertheless, if the JDBC 1.0 Driver in
Ng’s invention was “interchanged” with the JDBC 2.0 driver, according to
the teachings of Felt (see Felt, col. 5, ll. 50-53; col. 8, l. 60-col. 9, l. 14),
Ng’s invention would be unsuitable for its intended purpose. Compare Ng,
Fig. 5A (depicting container 50 including JDBC 2.0 Standard Extension
driver 501) with Fig. 5B (depicting container 52 including JDBC 1.0 driver
521 and JDBC 2.0 Standard Extension Adapter 523). Where a proposed
modification would render the prior art invention being modified
unsatisfactory for its intended purpose, the proposed modification would not
have been obvious. See Tec Air, Inc. v. Denso Mfg. Michigan Inc., 192 F.3d
1353, 1360 (Fed. Cir. 1999). Based on the Examiner’s specific findings and
conclusions, we find that the Examiner’s reason to combine the teachings of
these references is not supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion.
For the foregoing reasons, Appellants have persuaded us of error in
the rejection of: (1) independent claim 1; (2) independent claims 12, 17, 18,
and 23, which recite commensurate limitations (Ans. 4); and (3) dependent
claims 2-5, 8-11, 15, 16, 21, and 22 for similar reasons. Therefore, we do not
sustain the rejections of claims 1-5, 8-12, 15-18, and 21-23.

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OBVIOUSNESS REJECTION OVER NG, FELT, AND
YOUSEFI’ZADEH
Claim 6 depends from independent claim 1 and recites that “the
identity comprises values for one or more data source properties.” App. Br.
21. Claims 13 and 19 are substantially identical to claim 6 and depend from
independent claims 12 and 18, respectively. Id. at 23, 25. Claim 7 depends
from dependent claim 6 and recites that “the identity comprises database
name, URL, and user name.” Id. at 21. Claims 14 and 20 are substantially
identical to claim 7 and depend from dependent claims 13 and 19,
respectively. Id. at 23, 25. The Examiner acknowledges that Ng and Felt
fail to teach or suggest all of the limitations of these dependent claims. Ans.
7. Nevertheless, the Examiner finds that Yousefi’zadeh teaches or suggests
the additional limitations of these dependent claims and that a person of
ordinary skill in the relevant art would have an apparent reason to combine
Ng, Felt, and Yousefi’zadeh. Id.
For the reasons set forth above, Appellants argue that Ng and Felt fail
to teach or suggest all of the limitations of independent claims 1, 12, and 18,
from which claims 6, 7, 13, 14, 19, and 20 depend. App. Br. 18. Because
we are persuaded that the Examiner fails to demonstrate that Ng and Felt
teach or suggest all of the limitations of the independent claims and because
the Examiner does not find that Yousefi’zadeh teaches or suggests the
limitations of claims 1, 12, and 18 that are missing from Ng and Felt, we
also do not sustain the obviousness rejection of claims 6, 7, 13, 14, 19, and
20.

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NEW GROUNDS FOR REJECTION UNDER 35 U.S.C. § 101
PRINCIPLES OF LAW
Transitory propagating signals are unpatentable under 35 U.S.C.
§ 101. In re Nuijten, 500 F.3d 1346, 1355 (Fed. Cir. 2007). According to
U.S. Patent and Trademark Office (USPTO) guidelines:
[a] claim that covers both statutory and non-statutory
embodiments . . . embraces subject matter that is not eligible for
patent protection and therefore is directed to non-statutory
subject matter. . . . For example, a claim to a computer readable
medium that can be a compact disc or a carrier wave covers a
non-statutory embodiment and therefore should be rejected
under § 101 as being directed to non-statutory subject matter.
U.S. Patent and 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/patents/law/comments/2009-08-
25_interim_101_instructions.pdf (emphases omitted). The USPTO also
provides the following guidance:
The broadest reasonable interpretation of a claim drawn to a
computer readable medium . . . typically covers forms of non-
transitory tangible media and transitory propagating signals per
se in view of the ordinary and customary meaning of computer
readable media, particularly when the specification is silent.
When the broadest reasonable interpretation of a claim covers a
signal per se, the claim must be rejected under 35 U.S.C. § 101
as covering non-statutory subject matter.
David J. Kappos, Subject Matter Eligibility of Computer Readable Media,
1351 OFF. GAZ. PAT. OFFICE 212 (Feb. 23, 2010) (citation omitted).
ANALYSIS
Independent claim 18 recites, in pertinent part, “[a] computer
accessible medium comprising program instructions.” App. Br. 24-25
(emphasis added). Upon reviewing Appellants’ Specification for context,
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we do not find an explanation for what constitutes the claimed “computer
accessible medium.” Nevertheless, Appellants note that
[v]arious embodiments may further include receiving,
sending or storing instructions and/or data implemented in
accordance with the foregoing description upon a carrier
medium. Generally speaking, a carrier medium may include
storage media or memory media such as magnetic or optical
media, e.g., disk or CD-ROM, volatile or non-volatile media
such as RAM (e.g. SDRAM, DDR SDRAM, RDRAM, SRAM,
etc.), ROM, etc. as well as transmission media or signals such
as electrical, electromagnetic, or digital signals, conveyed via a
communication medium such as network and/or a wireless link.
Spec. ¶ [0056] (emphases added).
Because Appellants’ Specification is silent regarding the
interpretation of this term, but includes broad definitions of “carrier
medium” and “transmission media or signals” for storing instructions, we
conclude that the claimed “computer accessible medium” may be broadly,
but reasonably, construed to encompass both non-transitory tangible media
and transitory propagating signals per se. Because independent claim 18
covers both statutory and non-statutory embodiments, it embraces subject
matter that is not eligible for patent protection. Accordingly, we enter a new
ground of rejection of claim 18 under 35 U.S.C. § 101 as directed to
non-statutory subject matter. Although we decline to reject every claim, or
even every independent claim, under our discretionary authority under 37
C.F.R. § 41.50(b), 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.

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CONCLUSIONS
We do not sustain the obviousness rejections of claims 1-23 under 35
U.S.C. § 103. Pursuant to our authority under 37 C.F.R. § 41.50(b),
however, we reject claim 18 under 35 U.S.C. § 101 as being directed to non-
statutory subject matter.

DECISION
The Examiner’s rejections of claims 1-23 are reversed. Pursuant to
our authority under 37 C.F.R. § 41.50(b), we reject claim 18 under 35 U.S.C.
§ 101 as being 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.”
Furthermore, 37 C.F.R. § 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).

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REVERSED
37 C.F.R. § 41.50(b)

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