Ex Parte LI et al

Patent Trial and Appeal BoardOct 10, 2012

10643628 (P.T.A.B. Oct. 10, 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. 10/643,628 08/18/2003 Wei Li 50277-2250 4451 42425 7590 10/10/2012 HICKMAN PALERMO TRUONG BECKER BINGHAM WONG/ORACLE 1 Almaden Boulevard Floor 12 SAN JOSE, CA 95113 EXAMINER SAEED, USMAAN ART UNIT PAPER NUMBER 2169 MAIL DATE DELIVERY MODE 10/10/2012 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 WEI LI, JIANSHENG HUANG, and ARI MOZES ____________ Appeal 2009-014144 Application 10/643,6281 Technology Center 2100 ____________ Before JEAN R. HOMERE, CAROLYN D. THOMAS, and JAMES R. HUGHES, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING 1 The real party in interest is Oracle International Corporation. Appeal 2009-014144 Application 10/643,628 2 INTRODUCTION Appellants request rehearing of the Patent Trial and Appeal Board’s (“Board”) Decision mailed July 23, 2012 (“Decision”), in which we affirmed the rejections of (1) claims 1, 2, 4-7, 12-15, 17-20, and 25-28 under 35 U.S.C. § 103(a) as being unpatentable over Agrawal (US 6,324,533 B1, Nov. 27, 2001) and Chen (US Patent Pub. 2002/0087561 A1, Jul. 4, 2002); (2) claims 3, 9-11, 16, and 22-24 under 35 U.S.C. § 103(a) as being unpatentable over Agrawal, Chen, and Bayardo (US 6,138,117, Oct. 24, 2000); and (3) claims 29 and 30 under 35 U.S.C. § 103(a) as being unpatentable over Agrawal, Chen, Bayardo, and Tamura (US Patent Pub. 2002/0059191 A1, May 16, 2002). ANALYSIS In their Request for Rehearing (“Request”), Appellants allege that the following points were based on a misunderstanding by the Board: (1) “a group-by query is a query, not a function” (Req. 2) and “Agrawal’s group-by query is not identified by a construct that extends a database language” (Req. 3); (2) “the Gather table function neither counts nor returns frequent itemsets” (Req. 3); (3) “[i]n neither table function does it make sense to accept a cursor as input” (Req. 5); and (4) “claims 9-11 and 29 are not strikingly similar, even conceptually, to the cited portions” (Req. 5). Appellants’ representative claim 1 explicitly recites “parsing a database statement to detect . . . a construct that extends the particular language, [and] identifies a function that counts and returns frequent itemsets given a cursor as input to the function.” (Claim 1; Decision 2). Appeal 2009-014144 Application 10/643,628 3 (1) Group-by query is not a function Specifically, Appellants contend that “Agrawal appreciates this distinction in that Agrawal discloses both queries that are not functions, and functions that are not queries. Examples of the latter are the Gather and Comb-K table functions” (Req. 2). As conceded above by Appellants and highlighted in our Decision (Decision 4), undisputedly Agrawal does indeed disclose “functions.” Thus, Appellants’ argument that “Agrawal’s group-by query is not a function” is moot given that it is undisputed that Agrawal’s at least discloses “Gather and Comb-k table functions,” both of which were highlighted in our Decision on page 4. Appellants further contend that claim 1 “relies on [a] construct that both identifies a function and extends a particular database language” (Req. 3)(emphasis added). As our Decision has clearly shown that Agrawal discloses a construct that identifies a function, Appellants now attempt to introduce belated arguments regarding the limitation extends a particular database language. Appellants have failed to cite where this argument was first made, as we do not find such an argument in the principal Brief. Such arguments at this stage of the prosecution are inappropriate and will not be considered. 37 C.F.R. § 41.52 (a)(1). A request for rehearing “‘must state with particularity the points believed to have been misapprehended or overlooked by the Board’” and “must specifically recite ‘the points of law or fact which appellant feels were overlooked or misapprehended by the Board.’” Ex Parte Quist, 95 USPQ2d 1140, 1141 (BPAI 2010) (precedential) (quoting MPEP § 1214.03). Appellants have not specifically Appeal 2009-014144 Application 10/643,628 4 pointed out any where the Board overlooked or misapprehended this particular point in its Decision. Therefore, these belated arguments are technically waived. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[T]he reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner's rejections, but were not.”). Similarly, the “Request for Rehearing” is not an opportunity to make arguments that could have been made in the principal brief on appeal. Appellants could have presented the new argument in support of claim 1 in the Appeal Brief, such that we would have had benefit of the Examiner’s evaluation of the argument in the responsive Answer. Appellants do not explain what good cause there might be to consider the new argument now. Appellants’ new argument is thus untimely and has, accordingly, not been considered. See Ex parte Borden, 93 USPQ2d 1473 (BPAI 2010) (informative). Furthermore, we decline to examine the claims sua sponte, looking for distinctions over the prior art. Cf. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court to examine the claims in greater detail than argued by an appellant, looking for [patentable] distinctions over the prior art.”). See also Ex parte Belinne, No. 2009- 004693, 2009 WL 2477843 at *3-4 (BPAI Aug. 10, 2009) (informative). It is Appellants’ responsibility to present clear arguments as to why the Examiner erred. We find Appellants’ apparent contention that we overlooked arguments that the construct extends a particular database language unpersuasive. Furthermore, we find no misapprehension with our understanding of a “function.” Appeal 2009-014144 Application 10/643,628 5 (2) Gather table function neither counts nor returns frequent itemsets Specifically, Appellants contend that “Agrawal’s Gather table function merely collects all the items of a transaction and outputs a record for the transaction” (Req. 3). Appellants further contend that “[a]lthough Comb-K returns one or more k-item combinations from a transaction, this is far from counting frequent itemsets” (Req. 4). Here, we start by again highlighting various concessions made by Appellants (see Decision 4). Previously, Appellants “conceded that the GatherComb-K function is being used for counting” (Reply Br. 3). Now, Appellants are asserting that “Comb-K returns one or more k-item combinations”, but is “far from counting frequent itemsets” (Req. 4). Although Appellants are flip-flopping on their views of Agrawal, we shall stand steadfast with our findings that Agrawal discloses both a function that counts and returns frequent itemsets. As stated in our Decision, Agrawal’s GatherJoin approach “is based on the use of table functions . . . and counts the support of the itemsets . . . and outputs a record for each transaction” (Decision 4). Appellants have further conceded that Agrawal’s disclosed Gather and Comp-K are part of a database statement that counts and returns frequent itemsets. (see Reply Br., 3; see also Req. 4.) In other words, Appellants have identified a function (i.e., the database statement) in Agrawal that performs the claimed “counts and returns” feature, yet Appellants argue that the disclosed “Gather and Comp-K” functions are only a portion of such a database statement (Req. 4). As noted in our Decision, whether the Gather and Comp-K are merely parts of the database statement as opposed to the Appeal 2009-014144 Application 10/643,628 6 entire database statement is irrelevant as claim 1 does not limit the claimed “function” to any particular steps. Claim 1 merely requires “a function that counts and returns.” “In the patentability context, claims are to be given their broadest reasonable interpretations. . . . [L]imitations are not to be read into the claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citations omitted). A claim meaning is reasonable if one of ordinary skill in the art would understand the claim, read in light of the specification, to encompass the meaning. See In re American Academy of Science Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004). Any special meaning assigned to a term “must be sufficiently clear in the specification that any departure from common usage would be so understood by a person of experience in the field of the invention.” Multiform Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998). In our Decision, we found that the claimed “function” was not limited as argued (Decision 5). Thus, Appellants’ arguments are not persuasive that the Board misapprehended or overlooked any points in our original decision. (3) Accept A Cursor As Input Appellants contend that “[i]n nether table function does it make sense to accept a cursor as input” (Req. 5). In our Decision, we found that there is no requirement that the problem solved by the secondary reference (e.g., Chen) be discussed by the primary reference (e.g., Agrawal) to apply the teachings of the secondary reference in a rejection under 35 U.S.C. § 103 (Decision 5). Appeal 2009-014144 Application 10/643,628 7 Here, the Examiner directed our attention to Chen’s teachings of a “cursor as input” and how such a cursor is used by the function (Ans. 5-6; 23-25). The Supreme Court has held that in analyzing the obviousness of combining elements, a court need not find specific teachings, but rather may consider “the background knowledge possessed by a person having ordinary skill in the art” and “the inferences and creative steps that a person of ordinary skill in the art would employ.” See KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1740-41 (2007). To be nonobvious, an improvement must be “more than the predictable use of prior art elements according to their established functions,” and the basis for an obviousness rejection must include an “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Id. The Examiner has found actual teachings in the prior art of using a cursor as input and has provided a rationale for the combination with Agrawal. Further, the teachings suggest that the combination involves the predictable use of prior art elements according to their established functions. Accordingly, we found in our Decision that the Examiner had provided sufficient motivation for modifying Agrawal with the teachings of Chen. Thus, Appellants’ arguments are not persuasive that the Board misapprehended or overlooked any points in our original decision. (4) Claims 9-11 and 29 are not strikingly similar to the cited portions In our Decision (Decision 6-7), regarding claims 9-11 and 29, we found that the recited “specify a minimum length” (e.g., claim 9) is Appeal 2009-014144 Application 10/643,628 8 strikingly similar (at least conceptually) to Bayardo’s teaching of frequent itemsets being more than 10 inches length (see Bayardo, col. 9, ll. 56-59); the recited “specify a maximum length” (e.g., claim 10) is strikingly similar (at least conceptually) to Bayardo’s teaching of frequent patterns being relatively short, e.g., less than 10 items (see Bayardo, col. 1, ll. 24-26); the recited “specify a set of one or more included items” (e.g., claim 11) is strikingly similar (at least conceptually) to Agrawal’s teaching of “selecting distinct first items in the candidate itemsets using a subquery” (see Agrawal, col. 3. ll. 3-4) ; and the recited “specify a set of one or more excluded items” (e.g., claim 29) is strikingly similar (at least conceptually) to Tamura’s “is excluded from the candidate k-itemset” (see Tamura, 1: ¶ [0021]). We found that each of these cited statements (read in their entirety as cited) specified a criteria for performing a process and included a “minimum, maximum, short, etc., requirement. For example, “more than 10 inches length” denotes a minimum length of, e.g., 11 inches for the criteria to be met. Appellants’ arguments are more appropriate for filing a Reply Brief as no showing is made of any points misapprehended or overlooked in our original decision based upon the administrative record at the time of the decision. Therefore, Appellants’ arguments are unpersuasive that the Board misapprehended or overlooked any points in our original decision. DECISION Accordingly, we have granted Appellants’ Request to the extent that we have reconsidered the original Decision but have DENIED it with respect to making any changes to the Decision. Appeal 2009-014144 Application 10/643,628 9 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). REHEARING DENIED tkl