Ex Parte Gaur et al

Patent Trial and Appeal BoardNov 26, 2018

14150410 (P.T.A.B. Nov. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/150,410 01/08/2014 16564 7590 11/28/2018 Shumaker & Sieffert, P.A. 1625 Radio Drive, Suite 100 Woodbury, MN 55125 FIRST NAMED INVENTOR Nitin Gaur 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 ATTORNEY DOCKET NO. CONFIRMATION NO. SVL920130096US1/l 161-021 1121 EXAMINER WILLIS, AMANDA LYNN ART UNIT PAPER NUMBER 2158 NOTIFICATION DATE DELIVERY MODE 11/28/2018 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): pairdocketing@ssiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NITIN GAUR, CHRISTOPHER D. JOHNSON, and BRIAN K. MARTIN Appeal2018-005620 Application 14/150,410 1 Technology Center 2100 Before ERIC S. FRAHM, JOHNNY A. KUMAR, and CATHERINE SHIANG, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL 1 According to Appellants, the real party in interest is International Business Machines Corporation (App. Br. 3). And, according to Appellants, this application is related to U.S. Patent Application No. 14/630,339, which is also pending as Appeal No. 2018-005532. Appeal2018-005620 Application 14/150,410 STATEMENT OF THE CASE Introduction Appellants appeal under 35 U.S.C. Â§ 134(a) from a final rejection of claims 19, 23, and 26-38. Claims 1-18, 20-22, 24, and 25 have been canceled. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. Disclosed Invention and Exemplary Claim Appellants' disclosed invention relates to schemaless or non-relational data storage and access management (Title), and more particularly to a computer program product and system operating "a software-based, elastic caching in-memory data grid" (Spec. ,r 3) which may be integrated with other schemaless systems (Spec. ,r,r 1--4; Abs., Fig. 3; independent claims 19 and 23). Data is managed "between an in-memory data grid and a schemaless data store" (Abs.). Independent claim 19 is exemplary of the claimed subject matter, and reads as follows: Claim 19: A computer program product comprising a non-transitory computer-readable storage medium having program code embodied therewith, the program code executable by one or more processors to: generate a plurality of hash codes for each of a plurality of keys, wherein each key of the plurality of keys is associated with one data item from a plurality of data items stored in one or more schemaless data stores; store the plurality of hash codes in a persistent data structure in an in-memory data grid, wherein the in-memory data grid and the one or more schemaless data stores are 2 Appeal2018-005620 Application 14/150,410 implemented on one or more servers and are addressable as a single address space by one or more applications; receive, from a requesting application from among the one or more applications, a request via the in-memory data grid to access a selected data item from the plurality of data items, wherein the selected data item corresponds to an associated key from among the plurality of keys; determine a derived hash code for the key associated with the selected data item; determine whether the derived hash code is present in the persistent data structure; in response to determining that the derived hash code is not present in the persistent data structure, provide a response via the in-memory data grid indicating that the selected data item is not available in the one or more schemaless data stores; and in response to determining that the derived hash code is present in the persistent data structure: request the selected data item that corresponds to the associated key from the one or more schemaless data stores; receive the selected data item from the one or more schemaless data stores; and provide the selected data item to the requesting application via the in-memory data grid. App. Br. 14--15 (Claims Appendix). Examiner's Rejections (1) The Examiner rejected claims 19, 23, 26-30, and 32-38 as being unpatentable under 35 U.S.C. Â§ I03(a) over Little (US 2013/0132408 Al; published May 23, 2013) and Berg (US 2012/0278344 Al; published Nov. 1, 2012). 2 Final Act. 2-17. 2 Appellants present arguments primarily as to the patentability of independent claim 19, and rely on those arguments as to dependent claims 26-37 (App. Br. 8-11). Appellants argue independent claim 23 separately, 3 Appeal2018-005620 Application 14/150,410 (2) The Examiner rejected claim 31 under 35 U.S.C. Â§ I03(a) as being unpatentable over the combination of Little, Berg, and Jagota (US 2012/0317149 Al; published Dec. 13, 2012). Final Act. 17-18. Principal Issue on Appeal Based on Appellants' arguments (App. Br. 5-13; Reply Br. 2---6), the following principal issue is presented: Did the Examiner err in rejecting claims 19, 23, and 26-38 as being obvious because the base combination of Little and Berg is not properly combinable to teach or suggest a computer program product for managing schemaless data access with an in-memory data grid, as set forth in representative claim 19? ANALYSIS We have reviewed the Examiner's rejection (Final Act. 2-17) in light of Appellants' contentions in the Appeal Brief (App. Br. 8-12) and the Reply Brief (Reply Br. 2---6) that the Examiner has erred, as well as the Examiner's response to Appellants' arguments in the Appeal Brief (Ans. 2- 5). We disagree with Appellants' contentions. With regard to representative but make the same teaching away arguments as made for claim 19, which contains commensurate limitations. We select independent claim 19 as representative of the group of claims rejected underÂ§ I03(a) over Little and Berg (claims 19, 23, 26-30, and 32-38), pursuant to our authority under 37 C.F.R. Â§ 4I.37(c)(l)(iv). Accordingly, our analysis herein will only address representative claim 19. We will decide the outcome of claim 31 rejected over the same base combination of Little and Berg, based on the outcome for claim 19. 4 Appeal2018-005620 Application 14/150,410 claim 19, we adopt as our own ( 1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Final Act. 2-6), and (2) the reasons set forth by the Examiner in the Examiner's Answer in response to Appellants' Appeal Brief (see Ans. 2-5). The Examiner has provided a factual basis and articulated reasoning with a rational underpinning to support the conclusion of obviousness with regard to claim 19 (see Final Act. 2-6; Ans. 2-5). See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007). We agree with the Examiner (Final Act. 6; Ans. 3-5) that it would have been obvious to modify Little's database management system with Berg's in-memory data grid. One of ordinary skill in the art would have found Berg's teaching of more efficiently, and scalably, retrieving data using an in-memory data grid (see Berg ,r,r 6, 17, 31-33, 36, 37) to be a useful improvement to Little's schemaless database and data retrieval system (see Little ,r,r 13, 31-3 5), and it thus "logically would have commended itself to an inventor's attention in considering" some of the problems addressed by claim 19. See In re I con Health and Fitness, Inc., 496 F.3d 1374, 1380 (Fed. Cir. 2007). Moreover, Appellants have not shown that modifying Little with Berg would have produced unpredictable results or was "uniquely challenging or difficult for one of ordinary skill in the art" at the time of Appellants' invention (see Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)) ). A reference qualifies as prior art for a determination under Section 103 when it is analogous to the claimed invention. In re Clay, 966 F.2d 656, 658 (Fed. Cir.1992). "Two separate tests define the scope of analogous art: (1) whether the art is from the same field of endeavor, 5 Appeal2018-005620 Application 14/150,410 regardless of the problem addressed, and (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved." In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir.2004). To determine the invention's field of endeavor, we consider the "explanations of the invention's subject matter in the patent application, including the embodiments, function, and structure of the claimed invention." In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citations omitted). In the instant case on appeal, the claimed invention and the cited references are analogous art because they are from the same field of endeavor. This is evidenced by the fact that both Little and Berg are classified by the Patent Office in class 707 (Data Processing: Database and File Management or Data Structures), subclass 754 (Filtering Data). Subclass 754 is broken out under subclass 736 (Preparing Data for Information Retrieval), which in tum is underneath subclass 705 (Database and File Access). Both Little (Title; Abs.; ,r,r 3, 12, 13) and Berg (Abs.; ,r,r 4, 7) are concerned with database management systems capable of identifying the probable location of data needed for storage/access by filtering data. Appellants' application on appeal is also classified in class 707 (Data Processing: Database and File Management or Data Structures), and is also broken out under subclasses 705 (Database and File Access) and 736 (Preparing Data for Information Retrieval). 3 3 Appellants' application is classified in class 707, subclass 749 (Based on Record Similarity and Relevance), which is under subclass 7 48 (Ranking, Scoring, and Weighting Records), which, in tum, is under subclass 736 (Preparing Data for Information Retrieval). 6 Appeal2018-005620 Application 14/150,410 Although search classifications are evidence of analogous arts, similarities of function and structure carry greater weight. See In re Deminski, 796 F.2d at 442, fn. 3 (Fed. Cir. 1986) ("[C]ross reference in official search notes is some evidence of analogy, although the similarities and differences in structure and function of the inventions disclosed in the references ... carry far greater weight[.]" ( citation and quotation marks omitted)); see also In re Ellis, 476 F.2d 1370, 1372 (CCPA 1973). In this case, Little (Title; Abs.; ,r 1; Fig. 1) (filtering using a bloom filter), Berg (Abs.; Fig. 2A; ,r,r 7, 17) (filtering by geographic region), and the instant application on appeal (see Spec. ,r 6) all relate to filtering data ( class 707, subclass 7 54 ), which is a type of data preparation for information retrieval used to access data in databases. And, it is enough that the reference falls within the relevant field of endeavor. See State Contracting & Eng 'g Corp. v. Condotte Am., Inc., 346 F.3d 1057, 1069 (Fed. Cir. 2003) (similarity in structure and function between the invention and the prior art supports a conclusion that the prior art is within the inventor's field of endeavor). In other words, in this case, it is not necessary to determine if the reference is within the field of the inventor's endeavor, or whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. See In re Bigio, 381 F.3d at 1325. In light of the claimed invention's and applied art's noted similarities, the evidence in the instant case on appeal establishes that the claimed invention and applied art are directed to analogous arts. Although there must be "a reason to combine prior art references" (Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1367 (Fed. Cir. 2012) (internal citations omitted)), and an obviousness determination 7 Appeal2018-005620 Application 14/150,410 cannot rest upon impermissible hindsight reasoning, the our reviewing court "flexibly seeks evidence from before the time of the invention in the form of some teaching, suggestion, or even mere motivation ( conceivably found within the knowledge of an ordinarily skilled artisan) to make the variation or combination" to guard against impermissible hindsight reasoning. Rolls- Royce, PLC v. United Technologies Corp., 603 F.3d 1325, 1338 (Fed. Cir. 2010) (internal citations omitted). In the instant case before us, we find no error in the Examiner's findings as to the individual references applied (Final Act. 2-5), as well as the Examiner's reasoning articulated and set forth in the (i) Final Rejection (Final Act. 6), and (ii) Answer in response to Appellants' arguments in the Appeal Brief (Ans. 2-5). Appellants' arguments (App. Br. 9-11; Reply Br. 3--4) that Little teaches away from using an in-memory data grid that is addressable as a single address space by one or more applications as recited in claim 19, because Little introduces bottlenecks, are unpersuasive. "A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant." In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994); see Para-Ordinance Mfg., Inc. v. SGS Importers Int'!., Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995). Furthermore, it is irrelevant that the prior art and the present invention allegedly have different purposes. See Nat'! Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1339 (Fed. Cir. 2004) ("A finding that two inventions were designed to resolve different problems . . . is insufficient to demonstrate that one invention teaches away from another."). A prior-art reference that discloses alternatives does not, 8 Appeal2018-005620 Application 14/150,410 simply by preferring some alternatives, "teach away" from the non-preferred alternatives, In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004), and a particular reference's mere silence about a particular feature does not tend to teach away from it, especially if it is disclosed elsewhere in the prior art, Syntex (US.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005). In other words, "[t]he prior art's mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed .... " In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Because Little teaches or suggests the subject matter of every claim limitation recited in claim 19 except for using an in-memory data grid (see Final Act. 2-5), one of ordinary skill in the art would not be led in a direction divergent from the path taken by Appellants (e.g., using an in- memory data grid). In fact, we agree with the Examiner that a person of ordinary skill in the art at the time of Appellants' recited invention would have been led in the same direction, the use of in-memory data grids, which "yield[] the predictable improvements of permitting efficient scaling when workload is increased" as taught by Berg (Ans. 3 citing Berg ,r,r 6, 17). We also agree with the Examiner that "[t]he use of the in-memory data grid serves as a distributed cache for the back-end database (Berg, i-f32), further increasing the speed and total throughput of the system" (Ans. 5), and providing a scalable solution (Final Act. 6 citing Berg ,r 17; Ans. 5) which "explicitly improves the system, reducing networking issues, by implementing the in-memory data grid as middleware between the client and the back-end database (Berg, Paragraphs 31 and 32)" (Final Act. 6). 9 Appeal2018-005620 Application 14/150,410 We agree with the Examiner's response to Appellants' teaching away arguments (Ans. 4--5) that Little and Berg merely set forth different types of criterion for filtering data for retrieval from databases, and do not discourage or prevent the use of other criteria. See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) ("A reference does not teach away ... if it merely expresses a general preference for an alternative invention but does not 'criticize, discredit, or otherwise discourage' investigation into the invention claimed."); In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (a prior-art reference that discloses alternatives does not, simply by preferring some alternatives, "teach away" from the non-preferred alternatives); see also Syntex (US.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005) (a particular reference's mere silence about a particular feature does not tend to teach away from it, especially if it is disclosed elsewhere in the prior art); In re Gurley, 27 F.3d at 553; Para-Ordinance Mfg., Inc. v. SGS Importers Int 'l, Inc., 73 F .3d 1085, 1090 (Fed. Cir. 1995). Accordingly, we disagree with Appellants' assertions (App. Br. 8-11; 2---6) that (i) Little and Berg teach away from each other, (ii) Little teaches away from the subject matter recited in claim 19, and (iii) there is no proper reason to combine Little and Berg. Summary In view of at least the foregoing, Appellants' contentions that there is no motivation to combine Little and Berg are unpersuasive, and we sustain the Examiner's obviousness rejection of independent claim 19, and claims 23, 26-30, and 32-38 grouped therewith. For similar reasons, and because (i) claim 31 depends directly from independent claim 19 and therefore 10 Appeal2018-005620 Application 14/150,410 contain all of the salient limitations; (ii) Appellants argue claims 31 is patentable for the same reasons as claim 19 (see App. Br. 8, 11 ); and (iii) claim 31 is rejected over the same base combination of Little and Berg, we also sustain the Examiner's obviousness rejection of dependent claim 31. CONCLUSIONS Appellants have not adequately shown Little teaches away from the subject matter of claim 19. Little and Berg are properly combinable, and the combination teaches or suggests a computer program product for managing schemaless data access with an in-memory data grid, as set forth in representative claim 19. Appellants have not sufficiently shown that the Examiner erred in rejecting representative claim 19, as well as remaining claims 23 and 26-38, under 35 U.S.C. Â§ 103(a). Thus, we sustain the rejections before us. DECISION The Examiner's rejections of claims 19, 23, and 26-38 under 35 U.S.C. Â§ 103(a) over the base combination of Little and Berg are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 11