Ex Parte Wong

Patent Trial and Appeal BoardFeb 29, 2016

12030393 (P.T.A.B. Feb. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/030,393 02/13/2008 Daniel ManHung Wong 51067 7590 03/02/2016 PVF -- ORACLE INTERNATIONAL CORPORATION c/o PARK, VAUGHAN, FLEMING & DOWLER LLP 2820 FIFTH STREET DAVIS, CA 95618-7759 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. OR06-17001 1636 EXAMINER BETIT, JACOB F ART UNIT PAPER NUMBER 2166 NOTIFICATION DATE DELIVERY MODE 03/02/2016 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): j eannie@parklegal.com syadmin@parklegal.com trisha@parklegal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DANIEL MANHUNG WONG Appeal2013-010048 Application 12/030393 Technology Center 2100 Before ST. JOHN COUTENA Y III, JAMES R. HUGHES, and LINZY T. McCARTNEY, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. Â§ 134(a) of the Examiner's Final decision rejecting claims 1, 3, 4, 6, 7, 9, 10, 12, 13, 15, 16, and 18-24. Claims 2, 5, 8, 11, 14, and 17 have been canceled. (Br. 3.) 1 We have jurisdiction under 35 U.S.C. Â§ 6(b ). We reverse. 1 We refer to Appellant's Specification ("Spec.") filed Feb. 13, 2008 and Appeal Brief ("Br.") filed Feb. 7, 2013. We also refer to the Examiner's Answer ("Ans.") mailed May 7, 2013, and Final Office Action (Final Rejection) ("Final Act.") mailed Oct. 9, 2012. Appeal2013-010048 Application 12/030,393 Appellant's Invention The invention at issue on appeal concerns database updating techniques, in particular, apparatus, computer-readable storage media, and methods for performing multi-stage table updates. The techniques include determining whether the storage space necessary for storing a transaction log associated with a table update query exceeds a threshold, and if so, dividing the query into sub-queries. (Spec. i-fi-f l, 4--12; Abstract.) Illustrative Claim Independent claim 1, reproduced below with the key disputed limitations emphasized, further illustrates the invention: 1. A method for performing database table updates, the method comprising: receiving, by a computer, a query for updating a table in a database; responsive to a storage space needed for storing a transaction log associated with the query exceeding a pre- determined threshold, dividing the query into a set of sub- queries by: identifying partitions in the table; and for each partition: determining if a storage space needed for storing a transaction log associated with a sub-query corresponding to the partition exceeds the pre-determined threshold; if not, processing the sub-query corresponding to the partition; and if so, dividing the partition into multiple subsets such that a storage space needed for storing a 2 Appeal2013-010048 Application 12/030,393 transaction log associated with each sub-query corresponding to a subset is less than the pre-determined threshold. Rejections on Appeal 1. The Examiner rejects claims 1, 3, 6, 7, 10, 12, 15, 16, and 19 under 35 U.S.C. Â§ 103(a) as being unpatentable over Fell et al. (US 2008/0077566 Al; Mar. 27, 2008) and Von Kaenel et al. (US 2004/0117358 Al; June 17, 2004). 2. The Examiner rejects claims 4, 9, 13, 18, and 20 under 35 U.S.C. Â§ 103(a) as being unpatentable over Fell, Von Kaenel, and Parson (US 2004/0083347 Al; Apr. 29, 2004). 3. The Examiner rejects claims 21-24 under 35 U.S.C. Â§ 103(a) as being unpatentable over Fell, Von Kaenel, and Miyashita et al. (US 2009/0307275 Al; Dec. 10, 2009). ISSUE Based upon our review of the administrative record, Appellant's contentions, and the Examiner's findings and conclusions, the pivotal issue before us follows: Does the Examiner err in concluding that Fell and Von Kaenel would have collectively taught or suggested "responsive to a storage space needed for storing a transaction log associated with the query exceeding a pre- determined threshold" (hereinafter "disputed limitations"), within the meaning of Appellant's claim 1, and the commensurate limitations of claims 10 and 19? 3 Appeal2013-010048 Application 12/030,393 ANALYSIS The Examiner provides the same basis for rejecting independent claims 1, 10, and 19 (Final Act. 3-5, 7; Ans. 3---6), and rejects representative claim 1 under 35 U.S.C. Â§ 103(a) as being obvious in view of Fell and Von Kaenel. (Final Act. 3-5.) Appellant contends that the combination of Fell and Von Kaenel does not teach or suggest the disputed features of representative claim 1. (Br. 11-18.) Specifically, Appellant contends, inter alia, that "Fell at most discloses determining whether data resulting from the query (or the data needed to be returned to the request client) is larger than the determined amount, and dividing the data into chunks for efficient transmission" (Br. 18) and "the transaction log disclose[ d] in Kaenel is different from the database transaction log that associated with the query for updating a table in the database" (Br. 16). We agree with Appellant that the Examiner has not sufficiently shown (Ans. 3---6; Final Act. 3-5, 7), nor do we find, that the combination of Fell and Von Kaenel teaches the disputed claim limitations. Although Fell may be interpreted to describe subdividing a query (i-f 4 7) and Von Kaenel may be interpreted to describe a transaction log (i-f l 043), the Examiner fails to explain how these disparate teachings fit together-why or how one of ordinary skill in the art would combine the references to teach or suggest subdividing a query base on exceeding the storage space for an associated transaction log. The Examiner, improperly, picks disparate pieces of the Fell and Von Kaenel references while using Appellant's claim as a road map and filling in the gaps with the knowledge of one of ordinary skill in the art (see, e.g., Ans. 5 - "Therefore, it would have been obvious to one of the ordinary skilled in the art" ... to modify Fell by applying 'tracking, and 4 Appeal2013-010048 Application 12/030,393 history log and activity history' system of Von Kaenel .... "). The record indicates that the Examiner's rejections are based upon impermissible hindsight in view of Appellant's disclosure. See In re Warner, 379 F.2d 1011, 1017 (CCP A 1967) ("A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art."). Consequently, we are constrained by the record before us to find that the Examiner erred in concluding Fell and Von Kaenel teach the disputed limitations of Appellant's claim 1. Independent claims 10 and 19 include limitations of commensurate scope. Claims 3, 6, 7, 12, 15, and 16 depend on claims 1 and 10, respectively. Accordingly, we reverse the Examiner's obviousness rejection of claims 1, 3, 6, 7, 10, 12, 15, 16, and 19. With respect to the obviousness rejections of dependent claims 4, 9, 13, 18, and 20-24, rejected as obvious over Fell and Von Kaenel as well as Parson or Miyashita, we reverse the Examiner's obviousness rejections for the same reasons set forth with respect to claim 1 (supra). The Examiner does not sufficiently explain how Fell and Von Kaenel determine whether the storage space necessary for storing a transaction log associated with a table update query exceeds a threshold, and if so, dividing the query into sub-queries. Accordingly, we agree with Appellant that the Examiner erred, as the analysis in the Examiner's rejection is not sufficient to show that claims 1, 3, 4, 6, 7, 9, 10, 12, 13, 15, 16, and 18-24 are unpatentable without further explanation. 5 Appeal2013-010048 Application 12/030,393 CONCLUSION Appellant has shown that the Examiner erred in rejecting claims 1, 3, 4, 6, 7, 9, 10, 12, 13, 15, 16, and 18-24 under 35 U.S.C. Â§ 103(a). DECISION We reverse the Examiner's rejections of claims 1, 3, 4, 6, 7, 9, 10, 12, 13, 15, 16, and 18-24. REVERSED 6