Ex Parte Moser et al

Patent Trial and Appeal Board

Oct 22, 2012

10662125 (P.T.A.B. Oct. 22, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GERD MOSER, THOMAS VOGT,
ARTHUR BERGER, GREGOR RIEKEN,
and RALF STEUERNAGEL
____________________

Appeal 2010-0064011
Application 10/662,125
Technology Center 2400
____________________

Before JOSEPH L. DIXON, JEAN R. HOMERE, and
ANDREW J. DILLON, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge JEAN R.
HOMERE.

Opinion Dissenting filed by Administrative Patent Judge JOSEPH L.
DIXON.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is SAP AG. (App. Br. 2.)
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1-50. (App. Br. 4.) We have jurisdiction under 35
U.S.C. § 6(b).
We affirm in part.
Appellants’ Invention
Appellants invented a method and system for allowing a client to
retrieve an identified data object from a master database (116) located at a
master data server (100). In particular, in response to a client’s request to
access the data object, an integration server (110) maps the object identifier
in the request to a corresponding master identifier in the database (116) to
thereby retrieve a data object associated therewith based on a set of mapping
rules associated with the client. (Specification ¶¶ [0005], [0006], Fig. 1.)
Illustrative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A system, comprising:
a master data server, to maintain a master database
storing master data objects, the master data server using master
identifiers to identify the master data objects, the master
database being accessible to clients; and
an integration server, in response to a request from a
client to access master data identified by a client identifier, to
map the client identifier to a master identifier, retrieve a master
data object from the master database based on the master
identifier, and map the master data object to a mapped data
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object based on a set of mapping rules associated with the
client.

Prior Art Relied Upon
Bodamer US 6,236,997 B1 May 22, 2001
Mahajan US 6,226,650 B1 May 1, 2001
Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
1. Claims 1-6, 8-11, 16, 19-23, 27-34, 40-42, 44-48, and 50 stand
rejected under 35 U.S.C. § 102(b) as being anticipated by
Bodamer.
2. Claims 39 and 43 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Mahajan.
3. Claims 7, 12-15, 17, 18, 24-26, 35-38, and 49 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Bodamer.

ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the Appeal Brief, pages 13-24 and the Reply Br. 2-5.
Anticipation Rejections
Representative Claim 1
Dispositive Issue 1: Have Appellants shown that the Examiner erred
in finding that Bodamer describes mapping a client identifier to a master
identifier to thereby retrieve a data object from the master database based
on a set of mapping rules associated with the client, as recited in claim 1?
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Appellants argue that Bodamer does not describe the disputed
limitations emphasized above. (App. Br. 13-20; Reply Br. 2-3.) In
particular, Appellants argue that while Bodamer discloses mapping a
database operation to a foreign database based on a target operation
specified by a client, the disclosed mapping of an operation does not
describe the mapping of one identifier to another identifier as recited in the
claim. (App. Br. 16-17.) Further, Appellants submit that Bodamer’s mapping
of the operation does not even describe retrieving a data object from the
foreign database based on a master identifier, let alone mapping the user’s
query to an object in the foreign database according to mapping rules
associated with the user. (Id. at 20; Reply Br. 3.)
In response, the Examiner finds that Bodamer’s disclosure of a
heterogeneous service module that, in response to a query received from a
client identifying a user catalog, retrieves from a foreign database a data
object associated therewith describes the disputed limitations. (Ans. 19-20.)
Based upon our review of the record before us, we agree with the
Examiner’s underlying factual findings and ultimate determination of
anticipation regarding claim 1. Bodamer discloses a plurality of modules
(210) in a local server (202) whereupon receiving an SQL statement from a
client (200) requesting a particular object located in a foreign database
(208), the modules translate the SQL query from the local/native server
format to the format of the foreign database from which the requested data
object is retrieved and returned to the client. (Col. 7, ll. 10-13, ll. 44-59, col.
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8, ll. 28-46.) We find that in order to retrieve an identified data object from a
database, a mapping between the requested object and a corresponding
object in the database must necessarily occur according to the criteria that
the client established in the query statement. Consequently, we agree with
the Examiner that Bodamer’s disclosure of retrieving the requested data
object from the foreign database describes the disputed limitations. It
follows that Appellants have not shown error in the Examiner’s finding that
Bodamer anticipates claim 1.
Claims 2-6, 8-11, 16, 21-23, 27, 29-34, 45-48, and 50 (not argued
separately) fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
Regarding claims 19, 20, 28, 40-42, and 44, Appellants reiterate
substantially the same arguments presented above for patentability of claim
1. (App. Br. 20-23.) As discussed above, these arguments are not persuasive.
Therefore, Appellants have not shown error in the Examiner’s rejection of
those claims.

Dispositive Issue 2: Have Appellants shown that the Examiner erred
in finding that Mahajan describes placing clients who sent a set of
characteristics that are the same as a set of characteristics into a client
group, as recited in claims 39 and 43?

Appellants argue that the Examiner erred in finding that Mahajan
anticipates the cited claims because the reference does not describe the
limitations emphasized above. Instead, Appellants argue that Mahajan
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merely discloses assigning groups of data to a client. (App. Br. 23-24.) We
agree with Appellants. Mahajan discloses a server that assigns a group of
data to clients associated therewith. (col. 4, ll. 4-8, ll. 20-23) We find that by
sending the data to two or more clients associated therewith, Mahajan
describes that the clients are grouped based on their shared interest in the
data. However, the cited disclosure does not describe that data originates
from the clients as required by the claims. Because Appellants have shown
at least one error in the Examiner’s rejection, we need not address
Appellants’ other arguments. It follows that Appellants have not shown error
in the Examiner’s rejection of claims 39 and 43 as being anticipated by
Mahajan.

Obviousness Rejection
Regarding claims 7, 12-15, 17, 18, 24-26, 35-38, and 49, Appellants
generally allege that those claims are patentable based on the arguments
raised for the claims discussed in the paragraphs above . (App. Br. 24.) As
discussed above, we find such arguments unavailing. We therefore sustain
the Examiner’s obviousness rejection for the reasons set forth above.

DECISION
We affirm the Examiner’s rejections of claims 1-38, 40-42, and 44-50.
However, we reverse2 the Examiner’s rejection of claims 39 and 43.

2 Judge Dixon concurs in the result only.
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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).

AFFIRMED-IN-PART

msc
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DIXON, Administrative Patent Judge dissenting-in-part.
I respectfully dissent with respect to the majority’s affirmance of the
rejections of claims 1-38, 40-42, and 44-50. Specifically, I dissent with
respect to the majority’s affirmance of the anticipation rejection of
independent claim 1.
Anticipation Rejection of independent claim 1 over Bodamer

The majority, in my opinion extends the rejection of independent
claim 1 to portions of the prior art description of Bodamer and then
additionally relies upon inherency (“a corresponding object in the database
must necessarily occur according to the criteria that the client established in
the query statement” (Opinion 5, emphasis added)). The majority states that:
We find that in order to retrieve an identified data object from a
database, a mapping between the requested object and a
corresponding object in the database must necessarily occur
according to the criteria that the client established in the query
statement. Consequently, we agree with the Examiner that
Bodamer’s disclosure of retrieving the requested data object
from the foreign database describes the disputed limitations.
(Opinion 5). Yet, this does not address the invention as recited in the
language of independent claim 1.
Appellants identify the appropriate standard for review under 35
U.S.C. §102 at page 13 of the Appeal Brief and provide corresponding
discussion with respect to the Examiner’s correlation of the prior art
disclosure of Bodamer (App. Br. 13-20; Reply Br. 2-3). The Examiner and
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Appellants focus the issue for appeal on the identified portions of Bodamer,
but the majority relies upon a different portion of the teachings of Bodamer
with respect to SQL translation.
In an ex parte appeal, the Board “is basically a board of review — we
review . . . rejections made by patent examiners.” Ex parte Gambogi,
62 USPQ2d 1209, 1211 (BPAI 2001). In the majority’s proffered
affirmance of independent claim 1, I find that the majority has not reviewed
the rejection of record, but has set forth new grounds of rejection based upon
alternative descriptions in the Bodamer reference rather than in those the
rejection as correlated by the Examiner and briefed by Appellants. The
portions of the reference relied upon to teach the claimed limitations which
have been argued by the Appellants have been replaced by the majority in
their discussion of the SQL statements rather than the “user catalog”
example as set forth by the Examiner. Moreover, the majority in their new
grounds of rejection does not address each and every limitation as set forth
in the language of independent claim 1.
Our reviewing court has recently identified that with anticipation and
prior invention:
it is not enough that the prior art reference discloses part of the
claimed invention, which an ordinary artisan might supplement
to make the whole, or that it includes multiple, distinct
teachings that the artisan might somehow combine to achieve
the claimed invention. See [In re] Arkley, 455 F.2d [586,]at 587
[(1972)](“[T]he [prior art] reference must clearly and
unequivocally disclose the claimed [invention] or direct those
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skilled in the art to the [invention] without any need for
picking, choosing, and combining various disclosures not
directly related to each other by the teachings of the cited
reference.”).
Net MoneyIn, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
Furthermore, Appellants have not been provided notice of the
majority’s new application of the prior art teachings except in the affirmance
of the Examiner’s rejection. Therefore, Appellants have had no opportunity
to show error in this proffered anticipation prior to the affirmance of the
majority’s own rejection. Moreover, I cannot agree with the majority’s
statement that “we agree with the Examiner that Bodamer’s disclosure of
retrieving the requested data object from the foreign database describes the
disputed limitations” (Opinion 5) since this statement oversimplifies the
Examiner’s rejection and does not address the totality of the claimed
invention. Therefore, I find that the majority does not address the rejection
which is before the Board.
Here, the majority has not shown that each of the claim limitations are
described in fact by the Bodamer as applied by the majority. The majority
agrees with the Examiner’s findings regarding the “user catalog” (Opinion
4) and then provides a discussion of the SQL statement (from a different
service module). Therefore, it is unclear and speculative how the operation
of the SQL “necessarily” relates to the “user catalog” which the majority
stated was agreed with as set forth by the Examiner. Furthermore, the
majority states that “[w]e find that in order to retrieve an identified data
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object from a database, a mapping between the requested object and a
corresponding object in the database must necessarily occur according to the
criteria that the client established in the query statement.” (Opinion 5).
While I agree with the majority that some mapping would be required for
retrieval, this finding by the majority does not “necessarily” describe or
require the claimed:
an integration server, in response to a request from a client to
access master data identified by a client identifier, to map the
client identifier to a master identifier, retrieve a master data
object from the master database based on the master identifier,
and map the master data object to a mapped data object based
on a set of mapping rules associated with the client.
(Claim 1).
I find the majority speculates as to this unapplied portion of the
description of Bodamer without the appropriate development of the
administrative record thereto. Nor does the majority make the requisite
factual findings necessary for an anticipation rejection, but rather seems to
speculate that “something” would be needed so the claim is anticipated. I
further find that an “identifier,” as claimed, is only described with respect to
the portion of the reference applied by the Examiner (at column 7) and at
columns 15 and 18, with respect to a database link, which is not
“necessarily” present (nor identified by the Examiner or majority).
Additionally, Bodamer discloses further operation of the interaction with the
foreign database system 208 where “[f]or example, the foreign database may
not support object definitions using data dictionary tables. In this case, the
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DDX 231 table specifies that the unknown table is a mimicked table.”
(Bodamer cols. 17-18). Therefore, how would there “necessarily” be a
mapping between object identifiers since they may not exist in the foreign
database system. I find numerous alternatives described at columns 15-20 of
Bodamer which persuade me that the majority has speculated. Therefore, I
cannot agree that Bodamer as applied by the Examiner or by the majority
describes the claimed invention. 
For completeness, I review Appellants’ arguments and the Examiner’s
responses thereto.
Appellants contend that the Examiner’s relied upon portions of
Bodamer referred to mapping a particular database operation to a target
foreign process which does not necessarily described the claimed:
an integration server, in response to a request from a client to
access master data identified by a client identifier, to map the
client identifier to a master identifier, retrieve a master data
object from the master database based on the master identifier,
and map the master data object to a mapped data object based
on a set of mapping rules associated with the client.
Appellants maintain that “Bodamer is silent with respect to mapping a
‘client identifier’ for master data to a ‘master identifier’ that can be used to
retrieve a master data object from the master database, where ‘master
identifiers’ can be used ‘to identify the master data objects stored in the
master database.” (App. Br. 17-18).
Appellants maintain that:
Bodamer refers to mapping a particular database operation to a
target foreign process. (Bodamer, Fig. 3A; 7: 9-18.) Because an
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operation (or a process) is not an identifier and cannot be used
as an identifier, an act of mapping of an operation to a process
is distinct from mapping of one identifier to another identifier.
While Bodamer refers to mapping a database operation to a
foreign processl4 [fn. 14 Bodamer, 7: 9-17.], and mapping a
query (by manipulating the syntax of the query) in order to
accommodate data dictionary structures in a foreign database
system, Bodamer is silent with respect to mapping a “client
identifier” for master data to a “master identifier” that can be
used to retrieve a master data object from the master database,
where “master identifiers” can be used “to identify the master
data objects stored in the master database.

(App. Br. 17-18). I agree with Appellants. The Examiner maintains the
same basic position in the Examiner’s Answer (Ans. 5-6, 18-21) which I
find unpersuasive of the requisite showing for anticipation, all the elements
of the claimed invention arranged as in independent claim 1.
I find independent claims 19, 20, 35, 40, 41, 42, and 44 to contain
similar limitations as addressed above. I find no separate responsive
arguments by the Examiner, and I would similarly reverse these rejections
for the same reasoning. I find claim 41 corresponds more closely to
independent claim 28 discussed below.
With respect to independent claim 28, the majority does not address
the variation in claim limitations for this claim nor does the majority
acknowledge that Appellants provide varied arguments thereto. The
Examiner maintains similar reliance upon columns 4, 5, and 8 of Bodamer.
(Ans. 7-8). Appellants contend that Bodamer is silent with respect to
mapping one set of data to another set of data and that Bodamer fails to
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disclose or suggest providing an interface for mapping subsets of a master
data into mapped data having a format that is acceptable to each client.
(App. Br. 21). I further find no responsive arguments from the Examiner
with respect to this argument and limitation. I agree with Appellants and
find no disclosure of the claim limitation “an interface for mapping subsets
of the master data into mapped data having a format that is acceptable to
each client.” Therefore, I find that the Examiner’s showing of anticipation
to be lacking and would reverse the rejection.   
 
Since the Examiner has not identified how the teachings of Bodamer
render obvious the deficiencies noted above, I would not sustain the
rejection of claims 7, 12-15, 17, 18, 24-26, 35-38, and 49 based upon
obviousness. Therefore, I would reverse the Examiner’s rejections of claims
1-38, 40-42, and 44-50.