Shahane, Dinesh et al.

Patent Trials and Appeals Board

Nov 30, 2020

2019003372 (P.T.A.B. Nov. 30, 2020)

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.
14/645,109 03/11/2015 Dinesh Shahane 2058.A05US1 2689
50400 7590 11/30/2020
SCHWEGMAN LUNDBERG & WOESSNER/SAP
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
BAKER, IRENE H
ART UNIT PAPER NUMBER
2152
NOTIFICATION DATE DELIVERY MODE
11/30/2020 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):
SLW@blackhillsip.com
uspto@slwip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DINESH SHAHANE and
KIRAN GANGADHARAPPA
____________________

Appeal 2019-003372
Application 14/645,109
Technology Center 2100
____________________

Before ERIC S. FRAHM, LINZY T. McCARTNEY, and
JAMES W. DEJMEK, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of claims
1–20, which constitute all the claims pending in this application. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm in part.

DISCLOSED AND CLAIMED INVENTION
The invention, entitled “ELASTIC SHARDING OF DATA IN A MULTI-
TENANT CLOUD” (Title) (bold emphases omitted), “generally relates to methods
and systems for use with computer networks” (Spec. ¶ 2), and more specifically,
cloud environments with large quantities and sizes of data to be stored, which causes
complications in the processes of (i) indexing the data being stored, and then later
(ii) searching and retrieving that data (Spec. ¶ 4). Appellant’s Figure 1 shows an
exemplary system, including the major system components of (1) a distributed
database 106, (2) a search core 124, (3) an indexing core having an index manager
114, indexing adapters 112A–D, and an index builder 122, and (4) a sharding
manager 110 (see generally Spec. ¶¶ 18–36).
Claims 1 and 8, reproduced below with bracketed lettering and emphases
added, are illustrative of the claimed subject matter:
1. A method comprising:
receiving, via a computer network, first primary data from a
first tenant;
receiving first auxiliary data relating to the first primary data
from the first tenant;

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2018). “The word ‘applicant’ when used in this title refers to the
inventor or all of the joint inventors, or to the person applying for a patent as
provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant identifies the real
party in interest as Ariba, Inc. (Appeal Br. 2).
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creating, using at least one hardware processor, a first index
for the first primary data and the auxiliary data from the first tenant;
storing, in a memory, the first index as a first shardlet;
bundling the first shardlet with one or more other shardlets for
the first tenant in a first shard group for the first tenant, causing the
first shard group to contain a plurality of shardlets for the first
tenant;
receiving second primary data from a second tenant in the
computer network;
receiving second auxiliary data relating to the second primary
data from the second tenant;
creating, using the one or more hardware processors, a second
index for the second primary data and the second auxiliary data from
the second tenant;
storing, in the memory, the second index as a second shardlet;
bundling the second shardlet with one or more other shardlets
for the second tenant in a second shard group, causing the second
shard group to contain a plurality of shardlets for the second tenant;
[A] packing the first shard group and second shard group in a
first shard, causing the first shard to contain a plurality of shardlets
for the first tenant and a plurality of shardlets for the second tenant;
storing the first shard in a first instance of a distributed
database, the distributed database comprising a plurality of
instances, each instance operating on a different logical or physical
device;
[B1] distributing the first shard to a first search core;
[B2] distributing a second shard to a second search core;
[B3] receiving a first search request;
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[B4] determining that the first search request involves
data located at an index included as a shardlet in a shard
group in the first shard; and
[B5] in response to the determining, forwarding the first
search request to the first search core in lieu of the second
search core.

Appeal Br. 27–28, Claims Appendix (formatting and emphases added).
8. A system comprising:
a distributed data distributed database;
a search core; and
an indexing core executable on one or more processors,
the indexing core comprising:
a plurality of different index adapters, each
index adapter corresponding to a different document
type of a different client application;
an index builder;
an index manager configured to receive first
primary data and first auxiliary data relating to the first
primary data from a first client application of a first
tenant, parse the first primary data and first auxiliary
data using the index adapter corresponding to the first
client application, and send a request to the index
builder to build an index for the first primary data and
first auxiliary data; and
the index builder configured to create a first
shardlet for the first primary data and the first
auxiliary data and store, in a memory, the first shardlet
with other shardlets in a first shard group for the first
tenant, causing the first shard group to contain a
plurality of shardlets for the first tenant, the index
builder further configured to pack the first shard group
along with a second shard group for a second tenant in
a first shard in an organization that is dynamically
determined, the second shard group comprising one or
more shardlets corresponding to the second tenant,
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causing the first shard to contain a plurality of
shardlets for the first tenant and a plurality of shardlets
for the second tenant; and
a sharding manager configured to distribute the
first shard to a first search core, distribute a second
shard to a second search core, receive a first search
request, determine that the first search request
involves data located at an index included as a shardlet
in a shard group in the first shard, and, in response to
the determining, fonvard the first search request to the
first search core in lieu of the second search core.

Appeal Br. 28–29, Claims Appendix (formatting and emphases added).

REJECTIONS
The Examiner made the following rejections:
(1) The Examiner rejected claims 1–20 under 35 U.S.C. § 101 as
being directed to a judicial exception such as an abstract idea, without
significantly more (see Final Act. 6–16). Because the Examiner has
withdrawn this rejection in the Answer (see Ans. 3), we do not reach the
merits or otherwise review this rejection in our decision, and we will not
address Appellant’s arguments (see Appeal Br. 8–19) directed thereto.
(2) Claims 1 and 15 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Collins et al. (US 2011/0289091 A1; published Nov. 24,
2011) (hereinafter, “Collins”) and Merriman et al. (US 2013/0290249 A1;
published Oct. 31, 2013) (hereinafter, “Merriman”). Final Act. 17–26.
(3) Claims 2 and 16 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Collins, Merriman, and Friedman et al. (US
2011/0138148 A1; published June 9, 2011) (hereinafter, “Friedman”). Final
Act. 26–28.
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(4) Claims 3 and 17 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Collins, Merriman, Plow et al. (US 2009/0049110 A1;
published Feb. 19, 2009) (hereinafter, “Plow”), and Dumais et al. (US
2007/0016553 A1; published Jan. 18, 2007) (hereinafter, “Dumais”). Final
Act. 28–31.
(5) Claims 4–7, 18, and 19 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Collins, Merriman, Plow, Dumais, and Li et al. (US
2010/0325281 A1; published Dec. 23, 2010) (hereinafter, “Li”). Final
Act. 31–35.
(6) Claims 8 and 9 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Collins, Merriman, Dumais, and Friedman. Final
Act. 36–41.
(7) Claim 10 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Collins, Merriman, Dumais, Friedman, and Plow. Final
Act. 41–42.
(8) Claims 11–14 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Collins, Merriman, Dumais, Friedman, Plow, and Li.
Final Act. 43–45.
(9) Claim 20 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Collins, Merriman, Plow, Dumais, Brasetvik, Alex,
Elasticsearch from the Bottom Up, Part 1 (Sept. 16, 2003), and Gieseke et
al. (US 2011/0264666 A1; published Oct. 27, 2011) (hereinafter,
“Gieseke”). Final Act. 46.

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ISSUES
Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 19–
26) and the Reply Brief (Reply Br. 1–14),2 the following two principal
issues are presented on appeal:
(1) Did the Examiner err in rejecting claims 1–7 and 15–20 under
35 U.S.C. § 103 as being unpatentable over the base combination of Collins
and Merriman, because the Examiner improperly determines that the
combination teaches or suggests limitations B1–B5, including
(i) distributing shards to first and second search cores as recited in
limitations B1 and B2; and/or (ii) forwarding a search request to the first
search core instead of the second search core as recited in limitation B5, of
claim 1, and as commensurately recited in claim 15?3

2 Appellant presents general arguments as to all of the claims, without
naming any specific claim by number (see Appeal Br. 19–26; Reply Br. 1–
14). Nonetheless, it is apparent from pages 21 and 23 through 25 of the
Appeal Brief that specific limitations are argued that appear in claims 1 and
15. Namely, Appellant presents arguments concerning (i) limitation A
recited in claim 1, and commensurately recited in claim 15, at pages 21 and
23 of the Appeal Brief; and (ii) limitation B, including B1–B5 recited in
claim 1, and commensurately recited in claim 15, at pages 24 through 25 of
the Appeal Brief. No specific limitations from claim 8 (having a different
scope) are argued. We find the arguments presented as to independent
claims 1 and 15 to be dispositive of claims 1–7 and 16–20, and we address
the issue as to claims 8–14 separately.
3 Because we agree with at least one of the dispositive arguments advanced
by Appellant (the issue as to limitation B, including B1, B2, and B5), we
need not reach the merits of Appellant’s arguments as to limitation A. See
Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (finding an
administrative agency is at liberty to reach a decision based on “a single
dispositive issue”).

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(2) Has Appellant shown the Examiner erred in rejecting claims 8–14
under 35 U.S.C. § 103 as being unpatentable over the base combination of
Collins, Merriman, Dumais, and Friedman?

ANALYSIS
Obviousness Rejection of Claims 1 and 15
We have reviewed the Examiner’s rejection of claims 1 and 15 (see
Final Act. 17–26) in light of Appellant’s arguments (Appeal Br. 19–26;
Reply Br. 1–14) that the Examiner has erred, as well as the Examiner’s
response to Appellant’s arguments in the Appeal Brief (Ans. 3–10).
Appellant’s arguments regarding limitations B1, B2, and B5 recited in claim
1 (and commensurately recited in claim 15) are persuasive of Examiner
error. We provide the following explanation for emphasis.
The USPTO “must examine the relevant data and articulate a
satisfactory explanation for its action including a rational connection
between the facts found and the choice made.” Motor Vehicle Mfrs. Ass’n
v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43 (1983) (internal
quotation marks and citation omitted); see Synopsys, Inc. v. Mentor
Graphics Corp., 814 F.3d 1309, 1322 (Fed. Cir. 2016) (stating that, as an
administrative agency, the PTAB “must articulate logical and rational
reasons for [its] decisions” (internal quotation marks and citation omitted)).
Appellant presents several arguments asserting the Examiner’s
rejection of independent claims 1 and 15, relying upon the combination of
Collins and Merriman as teaching or suggesting the packing of shard groups
(see e.g., limitation A in claim 1), is in error (see Appeal Br. 21–23; Reply
Br. 5–7). At the heart of these arguments is the Examiner’s reliance (see
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Final Act. 20, 25; Ans. 5–7) upon a non-patent literature prior art document
cited on form PTO-892 which was mailed with the Final Rejection on
June 12, 2018, entitled STACKOVERFLOW,4 as teaching or suggesting at least
portions of limitation A.
Appellant’s contentions that STACKOVERFLOW is not properly before
us as part of the rejection (see Appeal Br. 24; Reply Br. 3–4, 9–11) are
persuasive. We have not considered the STACKOVERFLOW reference since it
is not part of the statement of the rejection and may not be properly relied
upon. “Where a reference is relied on to support a rejection whether or not
in a ‘minor capacity,’ there would appear to be no excuse for not positively
including the reference in the statement of the rejection.” In re Hoch, 428
F.2d 1341, 1342 n.3 (CCPA 1970).
In any event, the dispositive issue presented by Appellant’s arguments
for claims 1 and 15 is whether the Examiner erred in finding Merriman, and
thus the combination of Collins and Merriman, teaches or suggests
limitations B1, B2, and B5 as recited in claim 1, and as commensurately
recited in claim 15. Limitations B1 and B2 require two separate search
cores, a first search core and a second search core. As Appellant contends,
“[t]he search core is the component that obtains a query from a user and then
uses the query to request data from instances of the database” (Appeal
Br. 25). As Appellant further contends, claims 1 and 15 set forth two
separate search cores, and the routing of queries from the users to the
different search cores (see Appeal Br. 26), which are different from the

4 STACKOVERFLOW, Generating shard key field for multi tenant mongodb
app. (2014), found at
https://stackoverflow.com/questions/26445408/generating-shard-key-field-
for-multi-tenant-mongodb-app., last accessed June 2018.
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recited distributed database, and perform the function of balancing search
request loads by staying updated and routing requests using an algorithm
(see Spec. ¶¶ 25, 26).
The Examiner initially determines that paragraph 21 of Merriman
teaches the first and second search cores as recited in limitations B1 and B2,
and paragraphs 28 and 304 of Merriman teaches “forwarding the first search
request to the first search core in lieu of the second search core” as recited in
limitation B5 (see Final Act. 20–21). According to the Examiner, “the
claimed search core provides the same functions as a database instance” as a
“database instance, like the search core, accesses data from the shards stored
in the database. Both the claimed search core and Merriman’s database
instances are responsible for servicing requests to the shards that the search
core/instance manages” (Ans. 8). The Examiner further determines that
“both the claimed search core and Merriman’s database instances are
responsible for managing requests directed to their shards” (Ans. 9), and
thus “the claimed search core is the same as Merriman’s disclosed database
instance” (Ans. 9).
Notably, the Examiner has not made a prima facie case that Merriman
teaches or suggests multiple, i.e., first and second, search cores. And,
Appellant’s contention that the recited distributed database 106 having
databased instances is separate and distinct from the recited search core 124
shown in Figure 1 (see Appeal Br. 25–26), is persuasive. In addition,
Appellant’s contentions that “the search core requests data from instances of
the databased” (Reply Br. 13), and thus “[t]he Examiner’s argument that a
database instance in Merriman can perform searches on its own database
instance does not make the database instance a search core” (Reply Br. 14),
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are persuasive.
Although paragraph 21 of Merriman describes accessing database
shards using a routing process, and partitioning a database into shards that
are accessible as instantiations of the database, this paragraph is silent as to
distributing shards to multiple different search cores as in limitations B1 and
B2, and/or forwarding a first search request to the first search core instead of
the second core as in limitation B5. Paragraphs 28 and 304 of Merriman
similarly describe routing database requests using routing processes 1468–
1472 running on servers 1408–1412, but again, are silent as to distributing
shards to multiple different search cores as in limitations B1 and B2, and/or
forwarding a first search request to the first search core instead of the second
core as in limitation B5. We will not resort to speculation or assumptions to
cure the deficiencies in the Examiner’s fact finding. See In re Warner, 379
F.2d 1011, 1017 (CCPA 1967).5
Based on the foregoing, we find that the Examiner has not properly
established factual determinations and articulated reasoning with a rational
underpinning to support the legal conclusion of obviousness for claims 1 and
15, resulting in a failure to establish a prima facie of obviousness. Thus,

5 Our finding is directed to a determination of whether or not Merriman’s
database instantiations teach or suggest the recited first and second search
cores set forth in limitations B1, B2, B5 of claim 1, and as commensurately
recited in claim 15. We make no finding regarding whether or not
Merriman’s shard router processes 1316 and 1318 (see Merriman Fig. 13;
¶¶ 277), and/or routing processes 1468, 1470, and 1472 (see Merriman Fig.
14; ¶¶ 303, 304) perform the same functions as the recited first and second
search cores of balancing search request loads by staying updated and
routing requests using an algorithm such as that recited in limitation B5 (see
Spec. ¶¶ 25, 26). We leave such a finding to the Examiner’s consideration
during subsequent prosecution.
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Appellant has overcome the Examiner’s prima facie case of obviousness
with respect to independent claims 1 and 15, and we are persuaded the
Examiner erred in rejecting claims 1 and 15. Accordingly, we do not sustain
the Examiner’s rejection of independent claims 1 and 15, as well as claims
2–7 and 16–20 depending respectively therefrom.
Obviousness Rejections of Claims 8–14
Appellant has not presented any separate arguments as to the merits of
the obviousness rejections of claims 8–14 over the base combination of
Collins, Merriman, Dumais, and Friedman. 37 C.F.R. § 41.37(c)(1)(iv)
(“[A]ny arguments or authorities not included in the appeal brief will be
refused consideration by the Board for purposes of the present appeal.”);
MPEP § 1205.02 (9th ed. Rev. 08.2017, Jan. 2018) (“If a ground of rejection
stated by the examiner is not addressed in the appellant’s brief, appellant has
waived any challenge to that ground of rejection and the Board may
summarily sustain it unless the examiner subsequently withdrew the
rejection in the examiner’s answer.” ; see also Hyatt v. Dudas, 551 F.3d
1307, 1314 (Fed. Cir. 2008) (“When the appellant fails to contest a ground
of rejection to the Board, . . . the Board may treat any argument with respect
to that ground of rejection as waived.”). Notably, claim 8 contains
limitations that are different than those found in claims 1 and 15, and
therefore claim 8 has a different scope.6 Appellant has only made arguments

6 Claim 8 recites “a search core,” and “an index core” having “index
adapters,” “an index builder,” “an index manager,” and “a sharding
manager.” These elements are not set forth in claims 1 and 15. In addition,
claim 8 differs from claims 1 and 15 in that (i) the index manager parses
data using an index manager and packs shard groups “in an organization that
is dynamically determined” (claim 8) (emphasis added); and (ii) the shards
are distributed by the sharding manager.
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as to the limitations found in claims 1 and 15 (see e.g., Appeal Br. 21, 23–
25) (arguing based on language found in claim 1, limitations A and B1–5),
and not claim 8.7 Therefore, the obviousness rejections of claims 8–14 over
the base combination of Collins, Merriman, Dumais, and Friedman are
sustained because Appellant has not presented any arguments as to these
rejections or otherwise shown the rejections to be in error.

CONCLUSIONS
(1) Appellant has shown the Examiner erred in rejecting claims 1 and
15 under 35 U.S.C. § 103 as being unpatentable over Collins and Merriman.
Accordingly, on the record before us, we are constrained to reverse the
obviousness rejection of claims 1 and 15. For similar reasons, and because
claims 2–7 and 16–20 depend from claims 1 and 15 respectively, we are also
constrained to reverse the obviousness rejections of claims 2–7 and 16–20,
which all rely on the same base combination of Collins and Merriman.
(2) Appellant has not shown the obviousness rejections of claims 8–14
over the base combination of Collins, Merriman, Dumais, and Friedman to
be in error. Accordingly, we affirm the obviousness rejections of claims 8–
14.

7 Should there be further prosecution as to claim 8, the Examiner should
consider whether the early recitation in claim 8 of “a search core” causes
indefiniteness in view of the recitation in the final clause of claim 8 of a
sharding manager that distributes data to “a first search core” and “a second
search core.” Thus, it is not clear how the search cores are related to each
other (e.g., is the search core divided up into a first and second search core
portions?), especially in view of Appellant’s Figure 1, which only shows a
single search core 124.
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In summary:
Claims
Rejected
35
U.S.C. §
References Affirmed Reversed
1, 15 103 Collins,
Merriman
1, 15
2, 16 103 Collins,
Merriman,
Friedman
2, 16
3, 17 103 Collins,
Merriman,
Plow,
Dumais
3, 17
4–7, 18,
19
103 Collins,
Merriman,
Plow,
Dumais, Li
4–7, 18,
19
8, 9 103 Collins,
Merriman,
Dumais,
Friedman
8, 9
10 103 Collins,
Merriman,
Dumais,
Friedman,
Plow
10
11–14 103 Collins,
Merriman,
Dumais,
Friedman,
Plow, Li
11–14
20 103 Collins,
Merriman,
Plow,
Dumais,
Brasetvik,
Gieseke
20
Overall
Outcome
8–14 1–7, 15–
20
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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