Ex Parte Baek

Board of Patent Appeals and Interferences

May 2, 2011

10970517 (B.P.A.I. May. 2, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte OCK KEE BAEK
____________________

Appeal 2009-006711
Application 10/970,5171
Technology Center 2100
____________________

Before JAY P. LUCAS, JOHN A. JEFFERY, and DEBRA K. STEPHENS,
Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals from a final rejection of claims 1, 4, and 11 to 13
under authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).
We affirm the rejections.

1 Application filed October 21, 2004. Appellant claims the benefit under
35 U.S.C. § 119 of Canada application dating to October 31, 2003. The real
party in interest is IBM Corp.
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Appellant’s invention relates to a system for alerting a user that a
research conclusion is based on stale data when an underlying piece of
supporting data has been updated. In the words of Appellant:
The invention resides in a system, method
and program product for managing reference data.
A data access program receives data retrieval
policies and retrieve[s] reference data from remote
sources in accordance with the data retrieval
policies. A research application assists in
generating a conclusion based on said reference
data which has been retrieved. A local data system
stores the reference data retrieved by the data
access program. The local data system associates
the conclusion with the retrieved reference data.
In response to retrieval of updates to the reference
data, the local data system records that the
conclusion is based on stale reference data.
In accordance with features of the present
invention, in response to the retrieval of updates to
the reference data, the local data system notifies an
entity responsible for the conclusion that the
conclusion is based on stale reference data.
Optionally, the local data system can notify the
research application to process the updated
reference data to assist in generating a new
conclusion or validating the first conclusion, as the
case may be, based on the updated reference data.
(Spec. 3).
The following illustrates the claims on appeal:
Claim 1:
1. A system for managing reference data, said
system comprising:

a data access program, stored on a computer
readable medium, to receive data retrieval policies
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and retrieve reference data from remote sources in
accordance with the data retrieval policies;

a research application, stored on a second
computer readable medium, to assist in generating
a conclusion based on said reference data which
has been retrieved; and

a local data system to store the reference
data retrieved by the data access program, the local
data system associating said conclusion with said
retrieved reference data; wherein:

in response to retrieval of updates to
said reference data, the local data system
records that the conclusion is based on stale
reference data;

an original copy of the reference data
is preserved on the local data system;

said data retrieval policies comprise
an identification of said remote sources, an
identification of a type of reference data
required for said conclusion, and
specification of time intervals at which said
remote sources should be checked for
updates;

the data retrieval policies also include
an indication of an update priority of the
reference data; and

in response to retrieval of updates to
said reference data, the local data system
notifies said research application to process
said updated reference data to assist in
generating a new conclusion or validating
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the first said conclusion, as the case may be,
based on said updated reference data.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Meunier US 2003/0167443 A1 Sep. 04, 2003
Umberger US 2004/0068610 A1 Apr. 08, 2004
Cheng US 2004/0126840 A1 Jul. 01, 2004

REJECTION
The Examiner rejects the claims as follows:

Claims 1, 4, and 11 to 13 stand rejected under 35 U.S.C. § 103(a) for
being obvious over Cheng in view of Meunier and further in view of
Umberger.

We have only considered those arguments that Appellant actually
raised in the Brief. Arguments Appellant could have made but chose not to
make in the Brief have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUE
The issue is whether Appellant has shown that the Examiner erred in
rejecting the claims under 35 U.S.C. § 103(a). The issue specifically turns
on whether the references teach recording that a research conclusion may be
stale in response to the updating of a supporting piece of referenced data, as
claimed.
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FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellant has invented a system for managing reference data used to
draw conclusions based on that data. (Spec. 3, top). Reference data
retrieved in accordance with retrieval policies is stored to a local data
store. (Spec. 7, middle). When the retrieved data is updated, a flag is set
to indicate that the conclusion is based on stale data. (Spec. 10, l. 20).
2. The Cheng reference teaches a genomic database retrieval system that
retrieves data from a local store 518. (Cheng, ¶ [0118]). The system
checks for updates to the retrieved data periodically. (¶ [0116] and
[0017]). The Meunier reference also teaches the retrieval of documents
used to formulate conclusions to local storage. (Meunier, ¶ [0038]).
Meunier further teaches notifying the user when a relied upon document
becomes stale. (¶ [0032]).

PRINCIPLES OF LAW

Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
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“In reviewing the [E]xaminer’s decision on appeal, the Board must
necessarily weigh all of the evidence and argument.” In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992).
ANALYSIS
Arguments with respect to the rejection
of claims 1, 4, and 11 to 13
under 35 U.S.C. § 103(a)

The Examiner has rejected the noted claims for being obvious over
Cheng, Meunier and Umberger. Appellant demurs, arguing that “the
proposed combination does not teach the claimed feature of, ‘wherein, in
response to retrieval of updates to said reference data, the local data system
records that the conclusion is based on stale reference data.’” (Brief 12,
bottom). Appellant further argues that Meunier uses human judgment to
determine what information is or is not stale, which he believes disqualifies
the Meunier reference. (Brief 13, middle).
We find the argument concerning human judgment to be irrelevant
and inaccurate. First, the wording of the claim in question (claim 1), as
quoted above, does not preclude recording a stale conclusion made as a
result of human judgment, even if such human judgment were disclosed in
the reference. Second, as the Examiner points out, the monitoring agent 102
in Meunier automatically detects changes in a retrieved document (data).
(See Meunier ¶¶ [0037] to [0039]; Ans. 7, bottom.) We thus do not find
error in the rejection on this account.
Appellant further argues that “the proposed combination of
references, considered as a whole, does not teach or suggest the newly added
feature that ‘an original copy of the reference data is preserved on the local
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data system.’” (Brief 15, middle). Additionally, Appellant argues that the
references are improperly combined. (Brief 15, bottom). We find that
Umberger does teach the limitation quoted just above, in the snapshot
teaching described by the Examiner. (Ans. 8, middle). We further agree
with the Examiner that the references are properly combined, as the narrow
teaching of preserving originally-retrieved data to establish its difference
from later-retrieved data is common to the staleness determination of Cheng,
Meunier and Umberger, despite their different primary purposes. “It is
common sense that familiar items may have obvious uses beyond their
primary purposes, and a person of ordinary skill often will be able to fit the
teachings of multiple patents together like pieces of a puzzle.” KSR Int’l Co.
v. Teleflex, Inc., 550 U.S. 398, 402 (2007).
We thus decline to find error in the rejection.
CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellant has not shown that the Examiner erred in rejecting claims 1, 4,
and 11 to 13.
DECISION
We affirm the Examiner’s rejection of claims 1, 4 and 11 to 13.
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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