Ex Parte Liu et al

Patent Trial and Appeal BoardMar 19, 2013

10810152 (P.T.A.B. Mar. 19, 2013)

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. 10/810,152 03/26/2004 INV001Zhen Liu 50277-2416 8375 42425 7590 03/20/2013 HICKMAN PALERMO TRUONG BECKER BINGHAM WONG/ORACLE 1 Almaden Boulevard Floor 12 SAN JOSE, CA 95113 EXAMINER AHLUWALIA, NAVNEET K ART UNIT PAPER NUMBER 2166 MAIL DATE DELIVERY MODE 03/20/2013 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 ZHEN LIU, MURALIDHAR KRISHNAPRASAD, ANAND MANIKUTTY, RAVI MURTHY, JAMES WARNER, THOMAS H. CHANG, VIKAS ARORA, and SUSAN KOTSOVOLOS ___________ Appeal 2010-008660 Application 10/810,152 Technology Center 2100 ____________ Before ERIC B. CHEN, TREVOR M. JEFFERSON, and LARRY J. HUME, Administrative Patent Judges. CHEN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-008660 Application 10/810,152 2 This is an appeal under 35 U.S.C. § 134(a) from the final rejection of claims 1-50, all the claims pending in the application. We reverse and enter a new ground of rejection pursuant to our authority under 37 C.F.R. § 41.50(b). STATEMENT OF THE CASE Appellants’ invention relates to techniques for managing XML data associated with multiple execution units. An XML type value produced in a particular form by one execution unit is consumed by another execution unit. Annotating information sent to an XML producer execution unit causes the XML type value to be transformed into a canonical form that can be shared by all relevant execution units. (Abstract.) Claim 1 is exemplary, with disputed limitations in italics: 1. A method comprising the computer-implemented steps of: detecting that a portion of a query execution plan to service a request for data will cause a first producer execution unit that will perform said portion, according to said query execution plan, to generate XML data for use by a second consumer execution unit in performing another portion of said query execution plan; generating information to send to said first execution unit to cause said first execution unit to perform said portion of said query execution plan; wherein said information would cause said first execution unit to generate said XML data in a first form that cannot be used by said second execution unit; and annotating said information with an annotation that causes XML data generated by said first execution unit to be transformed to a canonical form for use by said second execution unit in performing said another portion of said query execution plan, Appeal 2010-008660 Application 10/810,152 3 wherein said annotating causes removal of one or more references to execution unit-specific data that is accessible by the first execution unit but that is not accessible by the second execution unit. Claims 1-50 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Fernandez (U.S. Patent No. 6,785,673 B1; Aug. 31, 2004). ANALYSIS We are persuaded by Appellants’ arguments (App. Br. 9-11; see also Reply Br. 1-3) that Fernandez does not describe the limitation “detecting that a portion of a query execution plan to service a request for data will cause a first producer execution unit that will perform said portion, according to said query execution plan, to generate XML data for use by a second consumer execution unit in performing another portion of said query execution plan,” as recited in claim 1. The Examiner found that a query planner of Fernandez, which partitions a view tree into subtrees such that one SQL query is generated for each subtree, corresponds to the limitation “detecting that a portion of a query execution plan to service a request for data will cause a first producer execution unit that will perform said portion, according to said query execution plan, to generate XML data for use by a second consumer execution unit in performing another portion of said query execution plan.” (Ans. 3-4, 14-15.) We do not agree. Fernandez “relates to converting relational data into XML (eXtensible Markup Language) on the Internet.” (Col. 1, ll. 19-21.) Figure 6 of Fernandez illustrates an architecture of a query planner and a translator. (Col. 4, ll. 15-16.) Fernandez explains that: Appeal 2010-008660 Application 10/810,152 4 The planner partitions a view tree into one or more subtrees; for each subtree, one SQL query is generated. The translator submits the SQL queries to the underlying RDBMS, reads in the result relations, and constructs one integrated (logical) relation. A tuple in the integrated relation represents a path from the root element to a leaf element in the result XML document. The XML document is constructed by re-nesting the tuples in the result relation and tagging each element. (Col. 38, ll. 16-23; see also Fig. 6.) However, the Examiner has not adequately identified which features from the Figure 6 embodiment of Fernandez correspond to the claimed “first producer execution unit” and the claimed “second consumer execution unit,” much less the limitation “to generate XML data for use by a second consumer execution unit in performing another portion of said query execution plan.” Thus, the Examiner has provided insufficient evidence to support a finding that Fernandez discloses the limitation “detecting that a portion of a query execution plan to service a request for data will cause a first producer execution unit that will perform said portion, according to said query execution plan, to generate XML data for use by a second consumer execution unit in performing another portion of said query execution plan.” Accordingly, we do not sustain the rejection of independent claim 1 under 35 U.S.C. § 102(e). Claims 2-38 depend from independent claim 1. We do not sustain the rejection of claims 2-38 under 35 U.S.C. § 102(e) for the same reasons discussed with respect to independent claim 1. Independent claims 39, 45, and 50 recite limitations similar to those discussed with respect to independent claim 1. We do not sustain the rejection of claims 39, 45, and 50, as well as dependent claims 40-44 and 46- 49, for the same reasons discussed with respect to claim 1. Appeal 2010-008660 Application 10/810,152 5 NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b) We enter the following new ground of rejection: Claims 20-38 and 42-44 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Claims 20-38 and 42-44 recites a “computer-readable medium.” Appellants’ Specification discloses that: The term “computer-readable medium” as used herein refers to any medium that participates in providing instructions to processor 204 for execution. Such a medium may take many forms, including but not limited to, non-volatile media, volatile media, and transmission media. . . . Transmission media can also take the form of acoustic or light waves, such as those generated during radio-wave and infra-red data communications. (Spec. ¶ [0040] (emphasis added).) Thus, under the broadest reasonable interpretation, the “computer-readable medium” of claims 20-38 and 42-44 encompasses transitory signals. Accordingly, claims 20-38 and 42-44 are directed to non-statutory subject matter. See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007) (“A transitory, propagating signal like Nuitjen’s is not a ‘process, machine, manufacture, or composition of matter.’ . . . [T]hus, such a signal cannot be patentable subject matter.”); see also M.P.E.P. § 2106 (I) (“Non-limiting examples of claims that are not directed to one of the statutory categories . . . [include] transitory forms of signal transmission (for example, a propagating electrical or electromagnetic signal per se.”)). This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that a “new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Appeal 2010-008660 Application 10/810,152 6 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 ground of rejection to avoid termination of proceedings (37 C.F.R. § 1.197 (b)) 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 37 C.F.R. § 41.52 by the Board upon the same record …. DECISION The Examiner’s decision to reject claims 1-50 is reversed. New ground of rejection has been entered under 37 C.F.R. § 41.50(b) for claims 20-38 and 42-44, rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. REVERSED 37 C.F.R. § 41.50(b) msc