Ex Parte Thomsen

Patent Trial and Appeal Board

Sep 28, 2012

11314709 (P.T.A.B. Sep. 28, 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.
11/314,709 12/21/2005 Dirk Thomsen 2005P00572US 7507
52025 7590 09/28/2012
SAP AG c/o BUCKLEY, MASCHOFF & TALWALKAR LLC
50 LOCUST AVENUE
NEW CANAAN, CT 06840
EXAMINER
HOCKER, JOHN P
ART UNIT PAPER NUMBER
2158
MAIL DATE DELIVERY MODE
09/28/2012 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 DIRK THOMSEN
____________________

Appeal 2010-005422
Application 11/314,7091
Technology Center 2100
____________________

Before JOSEPH L. DIXON, THU A. DANG, and
JAMES R. HUGHES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed December 21, 2005. The real party in interest is SAP
AG. (App. Br. 2.)
Appeal 2010-005422
Application 11/314,709

2

STATEMENT OF THE CASE
Appellant appeals from the Examiner’s rejection of claims 1-5, 7-14,
16-21, 23, and 24. Claims 6, 15, and 22 have been canceled. (App. Br. 2.)
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellant’s Invention
The invention at issue on appeal concerns methods for optimizing
database search strategies. In particular, a system, computer-readable
medium, and method for determining statistics for a field of a database table,
associated with a field of a check table. (Spec. 1:6-9, 4:12-6:14; Abstract.)2
Representative Claim
Independent claim 1, reproduced below, with disputed limitations
italicized, further illustrates the invention:
1. A method to determine statistics for a field of a
database table, comprising:
determining that the field of the table is associated with a
field of a check table;
determining a relationship between a number of distinct
values of the field in the table and a number of distinct values of
the field in the check table; and
determining the number of distinct values of the field in
the table based on the relationship and on the number of
distinct values of the field in the check table.

2 We refer to Appellant’s Specification (“Spec.”) and Appeal Brief (“App.
Br.”) filed November 3, 2008; and Reply Brief (“Reply Br.”) filed January
5, 2010. We also refer to the Examiner’s Answer (“Ans.”) mailed
November 9, 2009.
Appeal 2010-005422
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Rejections on Appeal 3
1. The Examiner rejects claims 1-9 under 35 U.S.C. § 101 as
reciting non-statutory subject matter.
2. The Examiner rejects claims 1-5, 7-14, 16-21, 23, and 24 under
35 U.S.C. § 102(b) as being anticipated by U.S. Patent App. Pub. No.
2003/0229617 A1, published Dec. 11, 2003 (“Rjaibi”).

ISSUES
Based on our review of the administrative record, Appellant’s
contentions, and the Examiner’s findings and conclusions, the pivotal issue
before us follows:
1. Does the Examiner err in concluding that claims 1-9 recite
non-statutory subject matter, in that the method recited in the claims may be
accomplished solely in one’s mind?
2. Does the Examiner err in finding that the Rjaibi discloses
determining; (1) “a relationship between a number of distinct values of the
field in the table and a number of distinct values of the field in the check
table;” and also (2) “the number of distinct values of the field in the table
based on the relationship and on the number of distinct values of the field in
the check table” within the meaning of Appellant’s claim 1 and
commensurate limitations of claims 10 and 19?

3 The Examiner withdraws the rejection of claims 10-18 under 35 U.S.C.
§ 101. (Ans. 3.) The rejection of claim 1 under 35 U.S.C. § 102(e) as being
anticipated by Ziauddin was previously withdrawn by the Examiner. (Ans.
17.) The Examiner includes a new ground of rejection (listed) in the Answer
– rejecting claims 1-9 under 35 U.S.C. § 101 as reciting non-statutory
subject matter.
Appeal 2010-005422
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4

FINDINGS OF FACT
We adopt the Examiner’s findings in the Answer and the Final Office
Action as our own.

ANALYSIS
Based on Appellant’s arguments (App. Br. 5-7), we select
independent claim 1 as representative of Appellant’s arguments and
groupings with respect to claims 1-5, 7-14, 16-21, 23, and 24. 37 C.F.R.
§ 41.37(c)(1)(vii).
Rejection Under 35 U.S.C. § 101
Appellant contends that “[c]laims 1 through 9 are necessarily tied to
an apparatus” (i.e., are not directed to and do not recite non-statutory subject
matter). (Reply Br. 4.) Specifically, Appellants assert that “[t]he claimed
database tables, fields and values necessarily involve the use of a computer
or machine. More specifically, the elements on which the claimed method
operates must be implemented by physical elements of an apparatus, and are
not mere abstract constructs.” (Id.) We disagree.
Considering the language of independent claim 1 as a whole, we
agree with the Examiner (see Ans. 5-6) that the process of claim 1 does not
meet Bilski’s “machine or transformation test” and could be performed
within the human mind or by a human writing on a piece of paper.4 The
claim recites a number of steps that are not tied to a particular machine – the

4 See CyberSource, 654 F.3d 1366, 1372 (Fed. Cir. 2011) (“It is clear that
unpatentable mental processes are the subject matter of claim 3. All of
claim 3’s method steps can be performed in the human mind, or by a human
using a pen and paper.”).
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claim does not recite any machine performing the functions of the steps, e.g.,
a processor. Nor do these steps transform data into a different state – the
claim simply recites: (1) “determining that the field of the table is associated
with a field of a check table;” (2) “determining a relationship between a
number of distinct values of the field in the table and a number of distinct
values of the field in the check table;” and (3) “determining the number of
distinct values of the field in the table based on the relationship and on the
number of distinct values of the field in the check table. See In re Bilski, 545
F.3d 943, 962-63 (Fed. Cir. 2008) (en banc), aff’d sub nom. Bilski v.
Kappos, 130 S.Ct. 3218 (2010).
Here, to the extent any transformation takes place, the transformation
is of one type of data into another type of data – (a) determining an
association, (b) determining a relationship, and (c) determining a number.
This is not a “transformation or reduction of an article into a different state
or thing constituting patent-eligible subject matter.” In re Bilski, at 962; see
id. at 963-64 (discussing patent-eligible data transformations). More
importantly, the claim is entirely devoid of any mention of a “machine.”
While Appellant urges that“[t]he claimed database tables, fields and values
necessarily involve the use of a computer or machine” (Reply Br. 4), in
actuality the “determining” steps could be accomplished within one’s mind
or utilizing a pen and paper.
Our reviewing court guides that “a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under § 101.” CyberSource, 654 F.3d at 1373. Because we conclude that

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the scope of claim 1’s method steps covers functions that can be performed
in the human mind, or by a human using a pen and paper, we conclude that
unpatentable abstract mental processes fall within the subject matter of claim
1.5
Rejection Under 35 U.S.C. § 102(b)
Appellant contends that Rjaibi does not anticipate (disclose) the
features recited in claim 1. (App. Br. 5-7; Reply Br. 4-5.) Specifically,
Appellant contends that “Rjaibi does not disclose or suggest any
relationship between a number of distinct values of a field in a table and a
number of distinct values of a field in a check table” (Reply Br. 4) and
“[c]onsequently, Rjaibi fails to disclose or suggest determining a number of
distinct values of a field in a table based on a relationship between the
number of distinct values of the field in the table and a number of distinct
values of a field in a check table” (Reply Br. 5).
The Examiner sets forth a detailed explanation of the anticipation
rejections in the Examiner’s Answer with respect to each of the claims and,
in particular, the rejection of claim 1. (Ans. 7-17.) Specifically, the

5 See Cybersource, 654 F.3d at 1372 (“It is clear that unpatentable mental
processes are the subject matter of claim 3. . . . Claim 3 does not limit its
scope to any particular fraud detection algorithm . . . . Rather, the broad
scope of claim 3 extends to essentially any method of detecting
credit card fraud based on information relating past transactions to a
particular ‘Internet address,’ even methods that can be performed in the
human mind.”); see also In re Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007)
(“The four categories [of § 101] together describe the exclusive reach of
patentable subject matter. If a claim covers material not found in any of the
four statutory categories, that claim falls outside the plainly expressed scope
of § 101 even if the subject matter is otherwise new and useful.”).
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Examiner submits that Rjaibi describes creating catalog table including a
determination of cardinality of a column of values of a database table. (Id.;
(citing Rjaibi ¶¶ [0001], [0003], [0005], [0010], [0029], [0031], [0035];
Abstract; Figs. 2A, 2B, and 2G).)
Upon consideration of the evidence on this record and each of
Appellant’s contentions, we find that the preponderance of evidence on this
record supports the Examiner’s findings that Rjaibi discloses the disputed
features of claim 1. Accordingly, we sustain the Examiner’s rejection of
claim 1 for the reasons set forth in the Answer, which we incorporate herein
by reference. (Ans. 7-17.) Our additional analysis will be limited to the
following points of emphasis.
Appellant’s claim does not define or in any way limit how the various
“determining” steps are to be accomplished – i.e., how the determinations
are made. Nor does the claim (or Appellant’s Specification) define how the
tables are “associated,” or the “relationship” between the values. The claim
simply requires (1) determining an association – “determining that the field
of the table is associated with a field of a check table” (claim 1); (2)
determining a relationship – “determining a relationship between a number
of distinct values of the field in the table and a number of distinct values of
the field in the check table” (id.); and (3) determining a number –
“determining the number of distinct values of the field in the table based on
the relationship and on the number of distinct values of the field in the check
table.”
Contrary to Appellant’s arguments in the Appeal Brief (App. Br. 5-7),
the claim does not recite or require either estimating or performing any
comparison. Also contrary to Appellant’s arguments in the Reply Brief
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(Reply Br. 4-5), Rjaibi describes a relationship between values of a column
(field) in a database table and values of a column in a check table (catalog
table) – Rjaibi describes creating a catalog table including a cardinality
determination from a database table. (Ans. 7-17; Rjaibi ¶¶ [0005], [0010];
Abstract; Figs. 2A, 2B.) As explained by Rjaibi:
Column cardinality is a value representing the number of
distinct values found in a database column. For example, the
column cardinality of the NAME column in Table IA of FIG.
2A is three, because there are three unique values (names) in
the column. Column cardinality statistics (number of unique
values within a set of values) are among some of the most
commonly required statistics used by a query optimization
software module.
(Rjaibi ¶ [0005].)
When a database system computes an estimate of column
cardinality, the database system stores the estimated value in
what is known as a system catalog table for future use by the
database system. For example, in a typical database system, the
system catalog table that stores the column cardinality estimates
for data in Table 1A of FIG. 2A may be as represented by
Table 1B of FIG.2B.
(Rjaibi ¶ [0010].)
We find that determining column cardinality values from the number
of distinct values found in a database column and creating a system catalog
table to store the column cardinality values necessarily requires determining:
(1) that the column (field) of the database table “is associated” with the
column cardinality column (field) of the catalog table; (2) “a relationship”
between the number of distinct values in the column of the database table
and the column cardinality column of the catalog table; and (3) the number
of distinct values in the column of the database table (the column
cardinality) based on the relationship and the number of distinct values in
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the column of the database table. (See Rjaibi ¶ [0010]; Figs. 2A, 2B.) It is
apparent from Rjaibi’s Figs. 2A and 2B that the database table “is
associated” with (is brought together with or forms a connection with) the
column cardinality column of the catalog table, and that the number of
distinct values in the column of the database table have a “relationship” (i.e.,
a connection) with the column cardinality column of the catalog table.
It follows that Appellant does not persuade us of error in the
Examiner’s anticipation rejection of representative claim 1. Appellant also
does not persuade us of error in the Examiner’s anticipation rejection of
independent claims 10 and 19 which include limitations of commensurate
scope or dependent claims 2-5, 7-9, 11-14, 16-18, 20, 21, 23, and 24
(dependent thereon) not separately argued with particularity. (App. Br. 5.)
Accordingly, we affirm the Examiner’s anticipation rejection of claims 1-5,
7-14, 16-21, 23, and 24.

CONCLUSIONS OF LAW
Appellant has not shown that the Examiner erred in rejecting claims
1-9 under 35 U.S.C. § 101.
Appellant has not shown that the Examiner erred in rejecting claims
1-5, 7-14, 16-21, 23, and 24 under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejection of claims 1-9 under 35 U.S.C.
§ 101.
We affirm the Examiner’s rejection of claims 1-5, 7-14, 16-21, 23,
and 24 under 35 U.S.C. § 103(a).
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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

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