Ex Parte Gu et al

Patent Trial and Appeal Board

Dec 17, 2012

10447866 (P.T.A.B. Dec. 17, 2012)

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.
10/447,866 05/28/2003 Richard Yu Gu 50277-2100 2782
42425 7590 12/18/2012
HICKMAN PALERMO TRUONG BECKER BINGHAM WONG/ORACLE
1 Almaden Boulevard
Floor 12
SAN JOSE, CA 95113
EXAMINER
LIN, SHEW FEN
ART UNIT PAPER NUMBER
2166
MAIL DATE DELIVERY MODE
12/18/2012 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 RICHARD YU GU, HARMEEK SINGH BEDI, and
ASHISH THUSOO
____________

Appeal 2010-007005
Application 10/447,866
Technology Center 2100
____________

Before ERIC B. CHEN, BARBARA A. BENOIT, and JAMES B. ARPIN,
Administrative Patent Judges.

BENOIT, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 31-40. Claims 1-30 have been canceled. App. Br. 2.1 We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.

1 Throughout this opinion, we refer to the Appeal Brief filed October 30,
2009 (App. Br.); the Examiner’s Answer mailed January 15, 2010 (Ans.);
and the Reply Brief filed March 2, 2010 (Reply Br.).
Appeal 2010-007005
Application 10/447,866

2
STATEMENT OF THE CASE
According to Appellants, their invention relates to using a single scan
of a source data structure to merge data into multiple destination data
structures. See generally Abstract; Spec. ¶ 0004; Figs. 1, 6. Claim 31 is
illustrative and reads as follows, with key disputed limitations emphasized:
31. A method of combining data within a relational database
system, the method comprising:
performing a first merge operation between data from a source
data structure and data from a first destination data structure to
produce a first result;
wherein the first merge operation is to store the first results in
the first destination structure;
wherein both the source data structure and the first destination
data structure are relational data structures within said relational
database system;
while said first merge operation is being performed, reading
data from said first result and using said data as a second source for
a second merge operation;
wherein said second merge operation is between said second
source and data in a second destination data structure;
wherein said second destination data structure is also a
relational data structure within said relational database system;
wherein said second destination data structure is different than
both said source data structure and said first destination data structure;
and
wherein the method is performed by a computer programmed to
be a special purpose machine pursuant to instructions from program
software.
This appeal is said to be related to Application No. 10/447,862 (App.
Br. 1), which was the subject of an appeal with a decision regarding
obviousness rejections applying different references to different claims than
in the appeal before us. Ex Parte Gu, Appeal No. 2009-004162, 2010 WL
Appeal 2010-007005
Application 10/447,866

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1733109 (BPAI 2010) (non-precedential) (reversing the Examiner’s
obviousness rejections).
Claims 31-40 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over O’Carroll (U.S. 6,772,165 B2; Aug. 3, 2004; filed Nov. 15, 2002),
Baum (U.S. 5,619,713; Apr. 8, 1997), and Appellants’ admitted prior art
(AAPA). Ans. 3-10.2

ANALYSIS
The crux of this appeal is whether the combination of O’Carroll,
Baum, and AAPA would have rendered obvious independent claim 31,
which includes the limitation “while said first merge operation is being
performed, reading data from said first result and using said data as a second
source for a second merge operation.” On the record before us, we are
persuaded by Appellants’ arguments (see generally App. Br. 12-16; Reply
Br. 1-4) that the combination would not have done so.
The Examiner found that various elements of O’Carroll’s Figure 1 and
Baum’s disclosure of a database engine that processes blocks of data through
each processing elements in a pipelined fashion collectively would have
rendered obvious the disputed limitation. Ans. 4, 6-7, 13. O’Carroll teaches
a merge process where four source documents 2, 3, 4, 5 are merged using
three merge operations (steps 10, 13, 22) to produce a target document 25.
See O’Carroll, Abstract; Fig. 1; col. 4, l. 30–col. 5, l. 5. During O’Carroll’s
multiple-step merge process, various intermediate data structures are

2 Throughout this opinion, we refer to the Appeal Brief filed October 30,
2009 (App. Br.); the Examiner’s Answer mailed January 15, 2010 (Ans.);
and the Reply Brief filed March 2, 2010 (Reply Br.).
Appeal 2010-007005
Application 10/447,866

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produced for input into subsequent merge operations. See O’Carroll, Fig. 1;
col. 4, l. 30–col. 5, l. 5.
The Examiner found O’Carroll’s source document 2 corresponds to
the recited “source data structure,” O’Carroll’s source document 3
corresponds to the recited “first destination data structure,” O’Carroll’s
source document 4 corresponds to the recited “second destination data
structure,” O’Carroll’s output of the first merge step 10 corresponds to
recited “the second source for the second merge operation,” and O’Carroll’s
merge step 13 corresponds to the recited “second merge operation.” Ans. 4,
12 (referring to O’Carroll, Fig. 1). We agree with Appellants that
O’Carroll’s second merge step 13 using source document 4 only begins after
the first merge step 10 is completed. App. Br. 12-13 (citing O’Carroll, col.
4, ll. 52-59). O’Carroll’s multi-step merge process is a serial merge process
and does not expressly or inherently disclose, while the first merge operation
(i.e., O’Carroll’s merge step 10) is being performed, reading data from said
first result and using the data as a second source (i.e., O’Carroll’s output
from merge step 10) for a second merge operation, as recited in claim 31.
The Examiner, however, found that Baum’s database engine, which
processes blocks of data through each processing element in a pipelined
fashion, also reads on the disputed limitation. Ans. 6-7, 11-15. Although
the Examiner concluded it would have been obvious to a skilled artisan to
combine O’Carroll and Baum to improve database processing speed (Ans. 7,
12-15), the Examiner has not provided a reason for applying Baum’s
pipelining technique specifically to O’Carroll’s merge step 10 and merge
step 13, such that reading data from the result of merge step 10 and using the
data as a source for merge step 13 occurs while merge step 10 is performed.
Appeal 2010-007005
Application 10/447,866

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Notably, the Examiner has not explained why Baum’s pipelining technique
would be applied to those particular two steps when various other steps also
are recited in claim 31.
In this light, the Examiner has failed to identify sufficient reasons that
would have prompted a person of ordinary skill in the relevant art at the time
the invention was made to combine the elements in the way in which the
claimed invention does. We therefore conclude the rejection of claim 31
was not based on sufficient articulated reasoning with some rational
underpinning to support the Examiner’s legal conclusion of obviousness.
See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Accordingly, we do not sustain the rejection under § 103 of
(1) independent claim 313, (2) independent claim 364 which recites
commensurate limitations to those discussed with respect to independent
claim 31, and (3) dependent claims 32-35 and 37-40 for the same reasons
discussed with respect to independent claim 31.

CONCLUSION
The Examiner erred in rejecting 31-40 under 35 U.S.C. § 103.

3 We note that, if there is additional prosecution of claim 31, the Examiner
should consider whether claim 31 is indefinite for mixing statutory classes of
inventions. Accord IPXL Holdings, LLC. v. Amazon.com, Inc., 430 F.3d
1377, 1384 (Fed. Cir. 2005) (stating “reciting both an apparatus and a
method of using that apparatus renders a claim indefinite under section 112,
paragraph 2”).
4 We further note that, if there is additional prosecution of claim 36, the
Examiner should consider whether claim 36 complies with the requirements
of 35 U.S.C. § 101. See In re Nuijten 500 F.3d 1357 (Fed. Cir. 2007)
(holding that a transitory, propagating signal cannot be patentable subject
matter).
Appeal 2010-007005
Application 10/447,866

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DECISION
The Examiner’s decision rejecting claims 31-40 is reversed.

REVERSED

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