Ex Parte Shergill et al

Patent Trials and Appeals Board

Feb 8, 2019

14572765 - (D) (P.T.A.B. Feb. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/572,765 12/16/2014 Kam Shergill
42425 7590 02/12/2019
HICKMAN PALERMO BECKER BINGHAM/ORACLE
1 Almaden Boulevard
Floor 12
SAN JOSE, CA 95113
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
50277-4629 1047
EXAMINER
PENG, HUAWEN A
ART UNIT PAPER NUMBER
2158
NOTIFICATION DATE DELIVERY MODE
02/12/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
usdocket@h35g.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KAM SHER GILL and VINEET MAR WAH
Appeal2018-006357
Application 14/572,765
Technology Center 2100
Before JOSEPH L. DIXON, JAMES W. DEJMEK, and
STEPHEN E. BELISLE, Administrative Patent Judges.
BELISLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a final rejection of
all pending claims, namely, claims 1-22. App. Br. 2, 4, and 32. 2 We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify Oracle International Corporation as the real party in
interest. App. Br. 2.
2 This Decision refers to the Final Office Action mailed July 7, 201 7
("Final Act."); Appellants' Appeal Brief filed December 7, 2017 ("App.
Br."); the Examiner's Answer mailed April 5, 2018 ("Ans."); Appellants'
Reply Brief filed June 4, 2018 ("Reply Br."); and Appellants' Specification
filed December 16, 2014 ("Spec.").
Appeal2018-006357
Application 14/572,765
STATEMENT OF THE CASE
The Claimed Invention
Appellants' application relates to "compressing [database] index
entries contained in leaf blocks of an index," and more specifically, to
"adaptively compressing leaf blocks on a per-block basis" (i.e., performing a
leaf block-by-leaf block compression determination). Spec. ,r 1.
According to the Specification, one implementation of a database
index is a "B-tree," which has a hierarchical arrangement of two types of
nodes: "leaf nodes" and "branch nodes." Spec. ,r 7. "Leaf nodes reside at
the lowest level of the B-tree hierarchy and contain values from the actual
column or columns upon which the index is built and the rowid of the
corresponding rows." Spec. ,r 7. "The non-leaf nodes of a B-tree index are
branch nodes," and "contain information that indicates a range of values."
Spec. ,r 8. Leaf nodes correspond to leaf blocks, which are units of
persistent storage, such as a magnetic disk. Spec. ,r,r 19, 20, and 23.
In general, exemplary embodiments include identifying a first
plurality of index entries that are to be stored in a first leaf block of the
index, Spec. ,r 28; determining whether to compress the first plurality of
index entries based on an amount of storage that would be required to store a
compressed version of the first plurality of index entries, Spec. ,r,r 30-31;
compressing the first plurality of index entries, Spec. ,r 3 3; identifying a
second plurality of index entries that are to be stored in a second leaf block
of the index, Spec. ,r,r 28 and 34; determining whether to compress the
second plurality of index entries, Spec. ,r 30; and determining that the second
plurality of index entries will not be compressed, Spec. ,r 32.
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Application 14/572,765
According to the Specification, "[i]ndex entries are compressed on a
per-block basis," such that "some index entries of an index may be
compressed while other index entries of the index are not compressed."
Spec. ,r 18. Similarly, "index entries in one leaf block may be compressed a
certain amount while index entries in another leaf block may be compressed
a greater amount." Spec. ,r 18. In this context, "[t]he determination of
whether to compress index entries of a leaf block may be based on whether
'negative compression' would result" ("' [ n ]egative compression' is a
condition where a compressed set of index entries would require more
storage space than if the set of index entries is not compressed"). Spec.
,r,r 18 and 30.
Appellants' Specification states that "a set of indexes for a single table
may require more storage space than the actual table," and "total index
storage for some database systems exceeds 100 GB in size." Spec. ,r 9.
Thus, according to Appellants, it is "imperative to efficiently compress
indexes." Spec. ,r 9. Appellants characterize their invention as "a non-
uniformly compressed index where some leaf blocks of an index are
compressed and others are not in order to achieve more optimal
compression." App. Br. 18.
Claim 1, reproduced below with bracketed notations added, is
illustrative of the claimed subject matter on appeal:
1. A method comprising:
[ (a)] identifying a first plurality of index entries that are
to be stored in a first leaf block of a plurality of leaf blocks of
an index;
[ (b)] determining whether to compress the first plurality
of index entries based on an amount of storage that would be
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Application 14/572,765
required to store a compressed version of the first plurality of
index entries;
[ ( c)] compressing the first plurality of index entries;
[ ( d)] identifying a second plurality of index entries that
are to be stored in a second leaf block of the plurality of leaf
blocks of the index;
[ ( e)] determining whether to compress the second
plurality of index entries;
[(f)] determining not to compress the second plurality of
index entries that are to be stored in the second leaf block;
[ (g)] wherein the method is performed by one or more
computing devices.
References
The Examiner relies on the following references as evidence of
unpatentability of the claims on appeal:
Ganesh
Christian
Kimura
US 2009/0292679 Al
US 2012/0296881 Al
US 2012/0323929 Al
Rejections
Nov. 26, 2009
Nov. 22, 2012
Dec. 20, 2012
The Examiner made the following rejections of the claims on appeal:
Claims 1 and 12 stand rejected under 35 U.S.C. § 101 for being
directed to patent-ineligible subject matter.
Claims 1-3, 6, 8, 11-14, 17, 19, and 22 stand rejected under 35 U.S.C.
§ I02(a)(l) as being unpatentable over Ganesh.
Claims 4, 5, 7, 9, 15, 16, 18, and 20 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Ganesh in view of Kimura.
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Claims 10 and 21 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Ganesh in view of Christian.
ANALYSIS
Subject Matter Eligibility
We reviewed the Examiner's Section 101 rejection of independent
claims 1 and 12 in light of Appellants' arguments that the Examiner erred.
We find Appellants' Section 101 arguments persuasive. Because
independent claims 1 and 12 contain similar limitations, App. Br. 3, we
analyze only claim 1 below.
Section 101 provides that a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." 35 U.S.C. § 101. However, Section 101
includes implicit exceptions: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. Alice Corp. v. CLS Bank Int 'l, 573 U.S.
208,216 (2014). To determine whether a claim falls within these excluded
categories, we are guided by the Supreme Court's two-step framework
described in Alice (implemented as Steps 2A and 2B in the 2019 Guidance3).
Id. at 217-18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75-77 (2012)).
3 For continuity of analysis, we adopt the "steps" nomenclature from the
USPTO's 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) ("2019 Guidance").
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STEP 1
Claim 1, as a method claim, recites one of the enumerated categories
of statutory subject matter in 35 U.S.C. § 101, namely, a process. The issue
before us is whether it is directed to a judicial exception without
significantly more.
STEP 2
The Supreme Court's two-step framework requires:
First, ... determine whether the claims at issue are directed to
one of those patent-ineligible concepts. If so, we then ask,
"[ w ]hat else is there in the claims before us?" To answer that
question, ... consider the elements of each claim both
individually and "as an ordered combination" to determine
whether the additional elements "transform the nature of the
claim" into a patent-eligible application. [The Court] described
step two of this analysis as a search for an "'inventive
concept'"-i.e., an element or combination of elements that is
"sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept]
itself."
Alice, 573 U.S. at 217-18 (citations omitted). To perform this test, we must
first determine whether the claim is "directed to" one of the judicially
recognized exceptions (i.e., a law of nature, a natural phenomenon, or an
abstract idea). Alice, 573 U.S. at 217. As part of this inquiry, we must "look
at the 'focus of the claimed advance over the prior art' to determine if the
claim's 'character as a whole' is directed to excluded subject matter."
Affinity Labs of Tex., LLC v. DirecTV, LLC, 838 F.3d 1253, 1257-58 (Fed.
Cir. 2016) (internal citations omitted). Per the 2019 Guidance, this first
inquiry has two prongs of analysis: (i) does the claim recite any judicial
exceptions (i.e., a law of nature, a natural phenomenon, or an abstract idea)
(Step 2A, Prong 1 ), and (ii) if so, is the judicial exception integrated into a
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practical application (Step 2A, Prong 2). See 2019 Guidance at 54. Finally,
if the claim is directed to a judicial exception, then we determine whether
the claim provides an inventive concept because any additional elements
recited in the claim provide significantly more than the recited judicial
exception (Step 2B).
STEP 2A, Prong 1
Method claim 1 recites the combined steps of identifying index entries
to be stored in leaf blocks (steps (a) and (d)), determining whether to
compress the index entries based on an amount of storage that would be
required to store the compressed versions ( steps (b ), ( e ), and ( f) ), and
compressing ( or not compressing) index entries ( step ( c)). As an initial
matter, we find claim 1 does not recite the judicial exceptions of either
natural phenomena or laws of nature. The next question is whether claim 1
recites the judicial exception of an abstract idea. To answer this, we
determine whether claim 1 recites any of the key concepts identified by the
courts as abstract ideas, including concepts in the following three groupings:
mathematical concepts; 4 certain methods of organizing human activity; 5
including fundamental economic principles or practices; and mental
4 See, e.g., Gottschalkv. Benson, 409 U.S. 63, 71-72 (1972); Bilski v.
Kappas, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP America v. InvestPic, 898 F.3d
1161, 1163 (Fed. Cir. 2018).
5 See, e.g., Bilski, 561 U.S. at 611---612; Alice, 573 U.S. at 219-20;
Ultramercial v. Hulu, 772 F.3d 709, 715 (Fed Cir. 2014).
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processes, including observations, evaluations, judgments, or opinions. 6 See
2019 Guidance at 52 n.12-15.
We find the claimed steps of identifying index entries to be stored in
leaf blocks (steps (a) and (d)), determining whether to compress the index
entries based on an amount of storage that would be required to store the
compressed versions ( steps (b ), ( e ), and ( f) ), and compressing ( or not
compressing) index entries ( step ( c)) do not recite any mathematical
concepts, like mathematical relationships, formulas, equations, or
calculations; any methods of organizing human activity, like fundamental
economic principles or practices, commercial or legal interactions, or
managing personal behavior or relationships or interactions between people;
and any mental processes. In addition, we find these steps, as a practical
matter, reasonably could not be performed entirely in a human's mind. See
Research Corp. Techs. v. Microsoft Corp., 627 F.3d 859, 868 (Fed. Cir.
2010) (a method for rendering a halftone image of a digital image by
comparing, pixel by pixel, the digital image against a blue noise mask was
found to recite patent-eligible subject matter because the method could not,
as a practical matter, be performed entirely in a human's mind); SiRF Tech.,
Inc. v. Int'! Trade Comm 'n, 601 F.3d 1319, 1331-33 (Fed. Cir. 2010) (a
method for calculating an absolute position of a GPS receiver and an
absolute time of reception of satellite signals was found to recite patent-
eligible subject matter because there was "no evidence ... that the
6 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
654 F.3d 1366, 1371-72 (Fed. Cir. 2011); Intellectual Ventures Iv.
Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
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calculations here [ could] be performed entirely in the human mind"); see
also Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016)
(holding the claimed "specific type of data structure designed to improve the
way a computer stores and retrieves data in memory" is patent eligible).
Accordingly, we hold independent claims 1 and 12 patent eligible,
because they do not recite any judicial exceptions to patentability. Because
Alice Step 1 is dispositive (implemented as 2019 Guidelines Step 2A, Prongs
1 and 2), we need not reach Alice Step 2 (inventive concept- implemented
as 2019 Guidelines Step 2B). As such, we do not sustain the Examiner's
rejection of claims 1 and 12 under 35 U.S.C. § 101.
Anticipation
The Examiner finds Ganesh discloses all elements of independent
claim 1, including ( 1) "determining whether to compress the first plurality of
index entries," by relying on Ganesh's disclosure of certain types of
compression that may be performed on a branch node, Final Act. 3 ( citing
Ganesh ,r,r 42, 43, and 45); (2) "compressing the first plurality of index
entries," by relying on Ganesh' s disclosure that "[ c ]ompression of elements
in the main index of a cascading index is possible because the main index is
not modified in response to each index update," and the "sequential storage
of multiple leaf blocks is leveraged to achieve certain types of compression,"
Final Act. 4 ( citing Ganesh ,r 40); and (3) "determining not to compress the
second plurality of index entries," by relying on Ganesh's disclosure that
"[ c ]ompression of indexes is currently not performed because compression
is not compatible with real-time indexes," Final Act. 4--5 (citing Ganesh
,r 39); see also Ans. 10-14.
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Appellants argue Ganesh does not disclose "a leaf block-by-leaf block
compression determination," and that Ganesh "is no different than prior
approaches that involved compressing all leaf blocks of an index or no leaf
blocks of an index, regardless of whether 'negative compression' resulted."
App. Br. 22-23 (arguing Ganesh does not disclose "that one leaf block of an
index is compressed and another leaf block of the same index is not
compressed" ( emphasis omitted)). Appellants argue that although Ganesh
discloses "3 different types of compression: address reduction compression,
key value compression, and key reduction compression," Ganesh does not
disclose "determining whether to compress index entries of a leaf block in
the first place, much less doing so based on an amount of storage that would
be required to store a compressed version of the index entries." App. Br. 23.
Appellants also argue "the compression in Ganesh is of branch nodes, not
leaf blocks, which is made clear in paragraph 41 where addresses are
removed from a branch node." Reply Br. 6-7; App. Br. 23 (Ganesh's
compression "pertain[ s] only to compression of branch nodes ( as opposed to
leaf blocks)"). We find Appellants' Section 102 arguments persuasive.
We find the Examiner has not provided sufficient evidence or
technical reasoning to support a finding that Ganesh discloses the claim 1
steps of "determining whether to compress the first plurality of index entries
based on an amount of storage that would be required to store a compressed
version of the first plurality of index entries" (i.e., a leaf block-by-leaf block
compression determination) and "compressing [ or not compressing] ...
index entries." Although Ganesh discloses "[t]echniques for compressing
branch nodes in an index," Ganesh, Abstract ( emphasis added), ,r,r 39-45,
the Examiner has not shown how such branch node compression techniques
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likewise disclose compressing index entries (i.e., leafblock(s)) and further
disclose doing so on a leaf block-by-leaf block basis, as in claim 1. First,
both Ganesh and Appellants' Specification distinguish between leaf blocks
( or leaf nodes) containing index entries and branch nodes, and identify them
as distinct elements of an index. See, e.g., Ganesh ,r 5 ("A B-tree [index]
typically comprises a root node, multiple branch nodes, and multiple leaf
blocks that are referenced by the branch nodes."); Spec. ,r 8 ("non-leaf nodes
of a B-tree index are branch nodes"); App. Br. 25 (in a database index, "a
branch node ... is different than a leaf node"). Second, Ganesh's branch
node compression techniques, like "address reduction compression,"
manipulate data in branch nodes to reduce branch node data size, but leave
the underlying leaf blocks untouched. See Ganesh, Figs. IB, IC, and ID,
,r,r 42, 43, and 45. Similarly, although Ganesh does refer to leaf block
compression in discussing key value compression of branch nodes, Ganesh
,r 43 ("if 1 MB of contiguously stored leaf blocks is compressed"), the
Examiner has not shown how this discloses determining whether to
compress index entries on a leaf block-by-leaf block basis and subsequently
compressing or not compressing those entries based on that determination.
Accordingly, we find that the Examiner has not shown by a preponderance
of the evidence that Ganesh anticipates illustrative independent claim 1.
For the reasons discussed supra, we do not sustain the Examiner's
rejection of independent claim 1 under 35 U.S.C. § I02(a)(l). Because
independent claim 12 contains limitations similar to independent claim 1, we
likewise do not sustain the Examiner's rejection of independent claim 12
under 35 U.S.C. § I02(a)(l). Additionally, we do not sustain the Examiner's
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rejection under 35 U.S.C. § 102(a)(l) of claims 2, 3, 6, 8, 11, 13, 14, 17, 19,
and 22, which depend directly or indirectly from either claim 1 or 12.
Obviousness
We find the Examiner has not identified how the additional
references, Kimura and Christian, remedy the above-noted deficiency in
Ganesh. As a result, we do not sustain the Examiner's rejections of
dependent claims 4, 5, 7, 9, 10, 15, 16, 18, 20, and 21 under 35 U.S.C.
§ 103.
DECISION
We reverse the Examiner's decision rejecting claims 1 and 12 under
35 U.S.C. § 101.
We reverse the Examiner's decision rejecting claims 1-3, 6, 8, 11-14,
17, 19, and 22 under 35 U.S.C. § 102(a)(l).
We reverse the Examiner's decision rejecting claims 4, 5, 7, 9, 10, 15,
16, 18, 20, and 21 under 35 U.S.C. § 103.
REVERSED
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