Ex Parte Harvey et al

Patent Trial and Appeal BoardMar 22, 2013

11134237 (P.T.A.B. Mar. 22, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte RICHARD H. HARVEY and RONALD W. RAMSAY ____________________ Appeal 2010-011467 Application 11/134,237 Technology Center 2100 ____________________ Before ERIC S. FRAHM, KALYAN K. DESHPANDE, and RAMA G. ELLURU, Administrative Patent Judges. DESHPANDE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-011467 Application 11/134,237 2 STATEMENT OF CASE 1 The Appellants seek review under 35 U.S.C. § 134(a) of a final rejection of claims 89-156, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We REVERSE. The Appellants invented a system, method, and computer readable medium for responding to directory service operations, including a receiving data path for receiving operations. Specification 4:1-24. An understanding of the invention can be derived from a reading of exemplary claim 89, which is reproduced below [bracketed matter and some paragraphing added]: 89. A system for responding to directory service operations, comprising: [1] an alternate evaluator comprising a local data store, the local data store comprising one or more lists for representing data structures storing data, the data having been preloaded into the one or more lists of the local data store from a directory server, the alternate evaluator operable to: [a] receive, via a receiving data path, a directory service operation comprising a query request; [b] evaluate the query request to determine a response based on the data stored in the one or more lists for representing data structures of the local data store, wherein the query request is evaluated without accessing the directory server; and [c] communicate, via a responding data path, the determined response to the query request. 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed April 19, 2010) and Reply Brief (“Reply Br.,” filed Aug. 10, 2010), and the Examiner’s Answer (“Ans.,” mailed June 10, 2010), and Final Rejection (“Final Rej.,” mailed Oct. 28, 2009). Appeal 2010-011467 Application 11/134,237 3 REFERENCES The Examiner relies on the following prior art: Kavanagh US 5,838,965 Nov. 17, 1998 Corn US 6,356,892 B Mar. 12, 2002 Kikta US 2002/0152298 A1 Oct. 17, 2002 Balogh US 2003/0084057 A1 May 1, 2003 Navada US 2003/0214956 A1 Nov. 20, 2003 Hornick US 6,912,533 B1 Jun. 28, 2005 REJECTIONS Claims 89, 92, 106, 109, 123, 126, 140, and 143 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Corn and Hornick. Claims 90-91, 107-108, 124-125, and 141-142 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Corn, Hornick, and Kikta. Claims 93, 95-99, 101, 110, 112-116, 118, 127, 129-133, 135, 144, 146-150, and 152 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Corn, Hornick, and Balogh. Claims 94, 100, 111, 117, 128, 134, 145, and 151 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Corn, Hornick, Balogh, and Navada. Claims 102-105, 119-122, 136-139, and 153-156 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Corn, Hornick, and Kavanagh. Appeal 2010-011467 Application 11/134,237 4 ISSUE The issue of whether the Examiner erred in rejecting claims 89-156 turns on whether the combination of Corn and Hornick teaches or suggests that “internally stored data” comprises “data [that has] been preloaded into the ... local data store from a directory server” and whether the combination of Corn and Hornick is proper. ANALYSIS The Appellants contend that the combination of Corn and Hornick fails to teach or suggest that “internally stored data” comprises “data [that has] been preloaded into the ... local data store from a directory server,” as per claims 89, 106, 123 and 140, and whether the combination of Corn and Hornick is proper. App. Br. 26-29 and Reply Br. 2-5. We agree with the Appellants. The Examiner relies on Corn to describe an “alternate evaluator, comprising a local data store, the local data store comprising one or more lists for representing data structures storing data.” Ans. 5. The Examiner relied on Hornick to describe “the data having been preloaded into the one or more lists of the local data store from a directory server.” Ans. 6. While we agree with the Examiner that Hornick describes connecting systems to proprietary data sources across the Internet and internally storing data acquired from the data sources (Ans. 6; Hornick 6:27-65) and an alternate evaluator that encompasses the LDAP system described by Corn (Ans. 5; Corn 4:66 – 5:8), we do not agree with the Examiner that the combination of Corn and Hornick describes “an alternate evaluator comprising a local data store, the local data store comprising one or more lists for representing data structures storing data, the data having Appeal 2010-011467 Application 11/134,237 5 been preloaded into the one or more lists of the local data store from a directory server.” That is, neither Corn nor Hornick describes an alternate evaluator that includes a local data store that is loaded with data from a directory server. While the Examiner has demonstrated the very specific elements are found in Corn and Hornick, we find the Examiner’s analysis to be tantamount to a piece-meal combination of the prior art that does not include an articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. Corn is related to a directory service system (Corn Abstract) and Hornick is related to a data mining system (Hornick Abstract) and we do not agree with the Examiner’s rationale that a person with ordinary skill in the art would look to a data mining system that uses external data sources to modify a directory system in order to “estimate the time it would take to complete a request for data” (Ans. 6). As such, we do not sustain the Examiner’s rejection of independent claims 89, 106, 123, and 140, and their respective dependent claims. Appeal 2010-011467 Application 11/134,237 6 CONCLUSIONS The Examiner erred in rejecting claims 89-156. DECISION To summarize, our decision is as follows.  The rejection of claims 89-156 is not sustained. REVERSED ELD