Ex Parte Sayal et al

Patent Trial and Appeal BoardOct 23, 2012

10918587 (P.T.A.B. Oct. 23, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte MEHMET SAYAL, FABIO CASATI, and MING-CHIEN SHAN ____________________ Appeal 2010-000501 Application 10/918,587 Technology Center 2100 ____________________ Before ERIC S. FRAHM, KALYAN K. DESHPANDE, and BRYAN F. MOORE, Administrative Patent Judges. DESHPANDE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-000501 Application 10/918,587 2 STATEMENT OF CASE1 The Appellants seek review under 35 U.S.C. § 134(a) of a final rejection of claims 1-25, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM-IN-PART. INVENTION The Appellants invented a method and system for automatically analyzing a data field and automatically generating a star schema. See Abstract. An understanding of the invention can be derived from a reading of exemplary claim 1, which is reproduced below [bracketed matter and some paragraphing added]: 1. A method, comprising: [1] categorizing a data field into one of a plurality of data field types, one of the data field types being an enumeration type data field; [2] developing dimensions for a table that represents an initial star schema design using the categorization of the data field; [3] detecting functional dependencies between the data field and other data fields; and [4] refining the initial star schema design by modifying the table based on detected functional dependencies. 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed Apr. 10, 2009) and Reply Brief (“Reply Br.,” filed Sep. 22, 2009), and the Examiner’s Answer (“Ans.,” mailed Jul. 23, 2009), and Final Rejection (“Final Rej.,” mailed Nov. 14, 2008). Appeal 2010-000501 Application 10/918,587 3 REFERENCES The Examiner relies on the following prior art: Ono Potter Sommerfield Wybenga US 6,721,760 B1 US 2005/0010550 Al US 2005/0060340 Al US 7,362,763 B2 Apr. 13,2004 Jan. 13,2005 Mar. 17,2005 Apr. 22, 2008 NA9309123, IBM_TDB, “Software Compiler for Analyzing and Measuring Programs,” 1 Sept. 1993, Acc. No. NA9309123, IBM Technical Disclosure Bulletin, pp. 123-128 (hereinafter “IBM") REJECTIONS2 Claims 22-25 stand rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Ans. 3-4. Claims 1, 4-11, 16, 18, and 22 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Potter. Ans. 4-8. Claims 2-3, 12, 19-20, and 23-24 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Potter and Sommerfield. Ans. 8-11. Claims 13 and 14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Potter and IBM. Ans. 11-12. Claim 17 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Potter and Ono. Ans. 12-13. 2 The Appellants point out the objection to the Specification and request that the objection be held in abeyance until the outcome of the appeal. We note that the Examiner’s objection is reviewable by petition under 37 C.F.R. § 1.181, see MPEP § 608.04, and thus is not within the jurisdiction of the Board. See In re Mindick, 371 F.2d 892, 894 (CCPA 1967). As such, we will not further consider this issue. Appeal 2010-000501 Application 10/918,587 4 Claims 15, 21, and 25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Potter and Wybenga. Ans. 13- 14. ISSUES The issue of whether the Examiner erred in rejecting claims 22-25 under 35 U.S.C. § 101 as being directed towards non-statutory subject matter turns on whether a “tangible computer readable medium” includes signal-bearing or transmission mediums. The issue of whether the Examiner erred in rejecting claims 1-25 as anticipated by or obvious over the cited prior art turns on whether Potter describes refining the initial star schema design by modifying the table based on detected functional dependencies. ANALYSIS Claims 22-25 rejected under 35 U.S.C. § 101 Claim 22 is directed to a “tangible computer readable medium” storing a plurality of modules. The Examiner finds that the claim is directed to non-statutory subject matter because the recited tangible computer readable medium includes signal bearing or transmission mediums. Ans. 3. The Appellants contend that the claim is directed to statutory subject matter because one of ordinary skill in the art would recognize that the tangible medium may include a storage medium such as a hard drive, random access memory, and the like, and thus would not interpret a tangible medium to be inclusive of a signal. App. Br. 9 and Reply Br. 3. Appeal 2010-000501 Application 10/918,587 5 We disagree with the Appellants. The specification does not clearly define “tangible” or a “computer readable medium.” The broadest reasonable interpretation of a “tangible computer readable medium” encompasses a transitory, propagating signal. Given that a medium can be both tangible and transitory, we agree with the Examiner’s finding that a “tangible computer readable medium” as broadly claimed encompasses a transitory, propagating signal. Transitory embodiments are not directed to statutory subject matter. Examples include physical but transitory forms of signal transmission such as radio broadcasts, electrical signals through a wire, and light pulses through a fiber-optic cable, that convey encoded information. In re Nuijten, 500 F.3d 1346, 1353-54 (Fed. Cir. 2007). Accordingly, we find the Examiner did not err in rejecting independent claim 22, and claims 23-25 which depend therefrom, under 35 U.S.C. § 101 as directed to non-statutory subject matter. Claims 1, 4-11, 16, 18, and 22 rejected under 35 U.S.C. § 102(e) as being anticipated by Potter The Appellants contend that Potter does not disclose “refining the initial star schema design by modifying the table based on detected functional dependencies,” as recited by limitation [4] of claim 1 and as similarly recited by claims 18 and 22. App. Br. 16-17. The Appellants specifically argue that Potter only discloses changing the representation of the star schema and fails to describe refining the star schema design. App. Br. 17. Appeal 2010-000501 Application 10/918,587 6 We agree with the Appellants. Limitation [4] requires refining the initial star schema design by modifying the table based on functional dependencies. The Examiner finds that Potter teaches formatting for display purposes and translation, “wherein translation meets refinement.” Ans. 17 (citing Potter ¶¶ 0042 and 0308). The Examiner further finds that Potter describes formatting for date purposes, which “necessarily and always meets refining” in the context of databases. Ans. 18 (citing Potter ¶ 0308). Although Potter describes formatting for display or date purposes and translation, the Examiner fails to provide any evidence or rationale to support the statements that these teachings “necessarily and always meets refining” in the context of databases. That is, formatting does not inherently require refining. As such, we find no evidence that Potter’s formatting and translation includes refining an initial star schema design as claimed. Since Potter fails to disclose this limitation, the reference does not anticipate independent claims 1, 18, and 22. Dependent claims 4-11 and 16 incorporate this same subject matter and therefore we do not sustain the rejection of these claims for the same reasons. Since this issue is dispositive as to the prior art rejections against these claims, we need not reach the remaining arguments raised by the Appellants against these rejections. Claims 2-3, 12-15, 17, 19-21, and 23-25 rejected under 35 U.S.C. § 103(a) The Appellants contend that the Examiner erred in rejecting claims 2- 3, 12-15, 17, 19-21, and 23-25 as obvious over the prior art for the same reasons asserted supra in support of claims 1, 4-11, 16, 18, and 22. We agree with the Appellants. The Appellants’ arguments were found to be persuasive supra and are persuasive here for the same reasons. Appeal 2010-000501 Application 10/918,587 7 CONCLUSIONS3 The Examiner did not err in rejecting claims 22-25 under 35 U.S.C. § 101 as being directed towards non-statutory subject matter. The Examiner erred in rejecting claims 1-25 as anticipated by or obvious over the cited prior art. DECISION To summarize, our decision is as follows:  The rejection of claims 22-25 under 35 U.S.C. § 101 is sustained.  The rejection of claims 1, 4-11, 16, 18, and 22 under 35 U.S.C. § 102(e) as anticipated by Potter is not sustained.  The rejection of claims 2-3, 12, 19-20, and 23-24 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Potter and Sommerfield is not sustained.  The rejection of claims 13 and 14 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Potter and IBM is not sustained.  The rejection of claim 17 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Potter and Ono is not sustained. 3 We have decided the appeal before us. However, should there be further prosecution of claims 1-17, the Examiner's attention is directed to 35 U.S.C. § 101 and U.S. Patent & Trademark Office, Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos, 75 Fed. Reg. 43,922 (July 27, 2010). The Examiner is invited to determine whether the steps of this method satisfy the machine-or- transformation test and whether this process is directed towards an abstract idea. Appeal 2010-000501 Application 10/918,587 8  The rejection of claims 15, 21, and 25 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Potter and Wybenga is not sustained. 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) (2011). AFFIRMED-IN-PART msc