International Business Machines Corporation

Patent Trials and Appeals BoardMay 10, 2021

2019006695 (P.T.A.B. May. 10, 2021)

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. 13/969,249 08/16/2013 SERGE BOURBONNAIS YOR920130197US2 (658 CON) 1681 49267 7590 05/10/2021 Tutunjian & Bitetto, P.C. 401 Broadhollow Road Suite 402 Melville, NY 11747 EXAMINER THAI, HANH B ART UNIT PAPER NUMBER 2163 NOTIFICATION DATE DELIVERY MODE 05/10/2021 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): docketing@tb-iplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SERGE BOURBONNAIS, YOU-CHIN FUH, YI JIN, XIAO LI, HONG MIN, and MIAO ZHENG ____________ Appeal 2019-006695 Application 13/969,249 Technology Center 2100 ____________ Before CAROLYN D. THOMAS, MICHAEL J. STRAUSS, and DAVID J. CUTITTA II, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–8 and 10. Claims 9 and 11 are canceled. See Claims App. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as International Business Machines Corporation. Appeal Br. 4. Appeal 2019-006695 Application 13/969,249 2 The present invention relates generally to partitioning a database into consistency groups for replication. See Spec., ¶ 2. Claim 1 is illustrative: 1. A system for replication group partitioning, comprising: a workload profiling module configured to analyze historical workload data for a plurality of data elements to identify and categorize one or more transaction patterns, each transaction pattern corresponding to a particular group of transactions that updates the same data elements and having a corresponding peak throughput; a recommendation module comprising a processor configured to generate a recommended partitioning of the plurality of data elements into one or more replication groups, based on the peak throughputs of the one or more transaction patterns, that are optimized toward a partitioning goal; and a change capture module configured to log transactions that involve the plurality of data elements in a first data center and to replicate the logged transactions in a second data center, where the replicated transactions are grouped according to the recommended partitioning. Appellant appeals the following rejections: R1. Claims 1–6 and 10 are rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Jackson (US 2002/0152305 A1, Oct. 17, 2002), Gaur (US 2012/0311295 A1, Dec. 6, 2012), and Faith (US 2010/0280882 A1, Nov. 4, 2010). Final Act. 23–26. R2. Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Jackson, Gaur, Faith, and Calder (US 2012/0303791 A1, Nov. 29, 2012). Final Act. 26–27. R3. Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Jackson, Gaur, Faith, and Langen (US 2008/0155310 A1, June 26, 2008). Final Act. 27–28. Appeal 2019-006695 Application 13/969,249 3 We review the appealed rejections for error based upon the issues identified by Appellant, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). RELATED APPEAL The current application is related to and has substantially the same Specification as application 13/800,139, which is the subject of Appeal No. 2019-006689. There is substantial overlap in the claims, rejections, and corresponding arguments made by Appellant in the current appeal and in the Related Appeal. Accordingly, where appropriate, we incorporate herein our analysis in the Related Appeal and decide each of these related appeals in separate decisions issued on this day. ANALYSIS Rejection under § 103(a) Claims 1–8 and 10 We have reviewed Appellant’s arguments in the Briefs, the Examiner’s rejection, and the Examiner’s response to the Appellant’s arguments. We concur with Appellant’s conclusion that the Examiner erred in finding that the combination of the references teach or suggest the recited “generate a recommended partitioning of the plurality of data elements . . . based on the peak throughputs of the one or more transaction patterns.” See independent claims 1 and 10 (emphasis added). As identified by Appellant, “the claims recite generating a recommended partitioning based on peak throughputs of the transaction patterns[] [and] [t]he Examiner has failed to show this relationship between the peak throughputs . . . and the ultimate generation of a recommended Appeal 2019-006695 Application 13/969,249 4 partitioning.” Appeal Br. 13. Appellant emphasizes that “the Examiner never addresses the feature of basing such recommended partitioning on the peak throughputs.” Id. at 14; see also Reply Br. 5. Here, the Examiner relies upon Gaur to teach the claimed “generate a recommended partitioning” (see Final Act. 23) and appears to rely upon both Jackson (see id.) and Faith (see id. at 24) to teach “peak throughputs.” However, the Examiner fails to respond to Appellant’s aforementioned contention that there is no relationship between the prior art’s alleged “peak throughputs” and the prior art’s ultimate generation of a recommended partitioning. See generally Ans. As highlighted above, independent claims 1 and 10 recite, inter alia, “generate a recommended partitioning . . . based on the peak throughputs.” See independent claims 1 and 10 (emphasis added). As such, the Examiner cannot entirely ignore this limitation in claims 1 and 10 while determining whether the subject matter of the claims would have been obvious. In re Wilson, 484 F.2d 1382, 1385 (CCPA 1970). Even if we assume arguendo (without deciding) that Gaur teaches “generate a recommended partitioning” and either Jackson and/or Faith teach “peak throughputs,” as proffered by the Examiner, we do not find, and the Examiner has not established, that the cited combination of references illustrate a nexus between Gaur’s generation of a recommended partitioning and Jackson/Faith’s alleged peak throughputs. We are particularly troubled by the chain of causation that is split between the references in the Examiner’s proffered combination of Gaur, Jackson, and Faith. As such, this issue turns on whether the Examiner has shown that the cited combination of references illustrate the above indicated nexus. Here, Appeal 2019-006695 Application 13/969,249 5 the Examiner has not proffered any evidence to show a linkage between generating the recommended partitioning and the peak throughputs. Significantly, in reviewing the record, we note that the Examiner’s Answer offers no rebuttal at all to Appellant’s aforementioned argument. This circumstance lead us to determine that because the argument under review is unrebutted, it is therefore persuasive. It follows that we will not sustain the rejection under 103(a). Thus, we disagree with the Examiner’s finding that the combined teachings of Jackson, Gaur, and Faith teach “generate a recommended partitioning . . . based on the peak throughputs,” as recited in each of the independent claims 1 and 10. The Examiner also has not found that any of the other references of record teach this feature. Because we agree with at least one of the arguments advanced by Appellant, we need not reach the merits of Appellant’s other arguments. Accordingly, we will not sustain the Examiner’s obviousness rejections of claims 1–8 and 10. CONCLUSION The Examiner’s rejections of claims 1–8 and 10 as being unpatentable under 35 U.S.C. § 103 over at least Jackson, Gaur, and Faith is reversed. Appeal 2019-006695 Application 13/969,249 6 In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–6, 10 103 Jackson, Gaur, Faith 1–6, 10 7 103 Jackson, Gaur, Faith, Calder 7 8 103 Jackson, Gaur, Faith, Langen 8 Overall Outcome 1–8, 10 REVERSED