Ex Parte Bangel et al

Patent Trial and Appeal Board

Feb 19, 2013

10140466 (P.T.A.B. Feb. 19, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MATTHEW JAY BANGEL, JAMES A. MARTIN, JR., and
DOUGLAS G. MURRAY
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Appeal 2011-007841
Application 10/140,466
Technology Center 2100
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Before JOHN A. JEFFERY, ELENI MANTIS MERCADER, and GLENN
J. PERRY, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
This application returns to us after another panel of this Board
affirmed the Examiner’s rejection of then-pending claims 1-26. See Ex
parte Bangel, No. 2007-2263 (BPAI Feb. 19, 2008) (“Bd. Dec.”).1,2
Prosecution was reopened after that decision, and Appellants now appeal
under 35 U.S.C. § 134(a) from the Examiner’s subsequent rejection of
claims 1-26. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 The earlier panel was Judges Thomas, Gross, and Jeffery.
2 Although Appellants indicate that there are no related appeals (App. Br. 1,
14), the Examiner correctly identifies the earlier Board decision in
connection with this application. Ans. 30-35.
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STATEMENT OF THE CASE
Appellants’ invention automatically transmits change history data
corresponding to a database design change to a “production” database. See
generally Spec. 1-4. Claim 1 is illustrative:
1. A method for maintaining a change history for a database design,
comprising:

providing a production database having a design;

formulating a change to the design;

entering change history data corresponding to the change into a
change history database;

implementing the change; and

automatically, when the change is implemented, sending an entirety of
the change history data from the change history database to the production
database for entry into the production database.

THE REJECTIONS
1. The Examiner rejected claims 1-26 under 35 U.S.C. § 103(a) as
unpatentable over Carley (US 6,701,345 B1; issued Mar. 2, 2004; filed Apr.
13, 2000), Epstein (US 2002/0049738 A1; published Apr. 25, 2002), and
Bodnar (US 6,295,541 B1; issued Sept. 25, 2001). Ans. 5-15.3
2. The Examiner rejected claims 1-26 under 35 U.S.C. § 103(a) as
unpatentable over Carley, Epstein, and Kopcha (US 2002/0133250 A1;
published Sept. 19, 2002; filed Mar. 14, 2001). Ans. 16-25.

3 Throughout this opinion, we refer to (1) the Appeal Brief filed September
2, 2010 (“App. Br.”); (2) the Examiner’s Answer mailed November 26, 2010
(“Ans.”); and (3) the Reply Brief filed January 26, 2011 (“Reply Br.”).
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THE OBVIOUSNESS REJECTION OVER CARLEY, EPSTEIN, AND BODNAR
The Examiner finds that Carley discloses every recited feature of
representative claim 1 except for (1) formulating a change to a production
database design, and (2) automatically, when the change is implemented,
sending an entirety of corresponding change history data from a change
history database to the production database for entry into the production
database. Ans. 5, 25-26. The Examiner, however, cites Epstein and Bodnar
for teaching these features in concluding that the claim would have been
obvious. Ans. 5-8, 25-30.
Appellants argue that since Epstein’s automated version history refers
to changes in metabase data—not its structure—this version history does not
correspond to the recited change history data as the Examiner contends.
App. Br. 5. Appellants add Bodnar is similarly deficient since not only is
there no change history data, let alone a separate change history database,
but changed data is merely replicated to sites remote from the original
change which is said to be opposite from the claimed invention. App. Br. 5-
6; Reply Br. 3-4. Lastly, Appellants contend that there is no reason to
combine the references as proposed in view of their disparate teachings and
fields of art. App. Br. 6-7.

ISSUE
I. Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Carley, Epstein, and Bodnar collectively would have taught or
suggested automatically, when a change to a production database design is
implemented, sending an entirety of change history data from a change
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history database to a production database for entry into the production
database?
II. Is the Examiner’s combining the teachings of these references
supported by articulated reasoning with some rational underpinning to
justify the Examiner’s obviousness conclusion?

ANALYSIS
We begin by noting that claim 1 of the present appeal differs from that
of the earlier appeal before this Board in that it includes various narrowing
limitations to the last clause, namely “automatically, when the change is
implemented, sending an entirety of the change history data from the change
history database to the production database for entry into the production
database” (emphasis added to indicate additions).
The Examiner cites Epstein and Bodnar for teaching these limitations,
and concludes that claim 1 would have been obvious when these teachings
are combined with Carley. Ans. 4-8, 25-30. We see no error in this
conclusion. First, Epstein’s metadata-enhanced database (metabase)
attributes include an automated version history, which is a revision history
that is kept automatically to allow users to view and compare differences
between any two revisions of a given record. Epstein Abstract, ¶¶ 0038,
0056. Epstein’s metabase also has a modification attribute that enables
modifying the database’s structure by, for example, creating database tables
and fields within tables. Epstein ¶ 0038. Specifically, when a record or the
database structure itself is modified, interested users are notified by email
which provides (1) a link to the revision, and (2) an accounting of the
revisions made and by whom. Epstein ¶ 0060. Users can also be notified of
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modifications to the field structure (new and edited fields, deleted files, etc.)
to not only inform them of these structural changes, but also to provide
additional data comporting with these changes. Epstein ¶¶ 0060, 0092.
The clear import of this discussion is that “change history data” (e.g.,
an accounting of the revisions to the database structure itself) is
automatically sent from a database to users responsive to implementing
database design changes. Although Epstein does not explicitly state that this
change history data is sent in its entirety, Epstein nonetheless at least
suggests as much, particularly in light of the distinction between the two key
data elements sent to the user responsive to structural changes: (1) a link to
the revision (singular), and (2) an accounting of the revisions made (plural)
and who made them. See Epstein ¶ 0060. That these revisions are
automatically kept in a revision history (i.e., an automated version history)
as noted above only bolsters our conclusion that Epstein’s accounted-for
revisions represent a comprehensive revision history.
This revision accounting also reasonably comports with Appellants’
description of “change history data” in the Specification, namely that it
“comprises details regarding the design change (e.g., what change was
made, when the change was made, what database was changed, etc.).” Spec.
8:3-5 (emphasis added). We emphasize the exemplary and open-ended
language of this description, for it only underscores that the recited “change
history data” is hardly limited to these examples. In any event, Epstein’s
accounting of database structural revisions sent to users noted above amply
comports with this description.
Nor are we persuaded of error in the Examiner’s reliance on Bodnar
merely to show that it is known to automatically send data from one
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database to another for entry responsive to an implemented change. Ans. 6-
8, 26-27 (citing Bodnar col. 24, ll. 1-25; Fig. 7C). As shown in Bodnar’s
Figure 7C, when the user changes the value of record R3 from “3” to “3B”
at Time 1 in row 726, that changed value is provided to client A’s
corresponding record R3 just after Time 3 in row 730 to synchronize the
clients. Bodnar col. 14, ll. 7-21. Notably, the Examiner indicates that client
A’s records represent a “production database,” and client B’s records
represent a “change history database” (Ans. 27, 30)—findings that are
undisputed.
Although Appellants contend that Bodnar moves data away from the
site of the change in a manner opposite to the claimed invention (Reply Br.
6), Appellants do not persuasively rebut the Examiner’s position based on
the fundamental concept of moving data responsive to a change from a
“change history database” to a “production database” under the Examiner’s
mapping. Although the particulars of this data may not reflect an entire
change history as Appellants seem to suggest (App. Br. 5-6; Reply Br. 3),
the Examiner’s rejection is not based solely on Bodnar, but rather over the
collective teachings of Carley, Epstein, and Bodnar. As noted above,
Epstein teaches sending an entirety of change history data from a database to
the user, and Bodnar teaches entering updated data in a production database
responsive to the update. Given these collective teachings, and further
noting that the earlier Board panel held that automatically propagating
changes from one database to another is well known as evidenced by Carley
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and Epstein (Bd. Dec. 6-7),4 we are unpersuaded of error in the Examiner’s
obviousness conclusion over the cited prior art’s collective teachings.
To the extent that Appellants argue that the change history data noted
above is not entered into the production database (see Reply Br. 6), such an
argument is not commensurate with the scope of claim 1 which does not
recite an affirmative data entry step, but rather sending an entirety of the
change history data from the change history database to the production
database for entry into the production database. We emphasize “for” here,
for this functional recitation merely recites an intended use of the data
sending step—an entry which may or may not occur.
Lastly, we find no error in the Examiner’s rationale to combine the
references. Ans. 8, 27-28. First, to the extent that Appellants’ combinability
argument is based on Carley and Epstein as being in disparate fields of art
(see App. Br. 6-7), the earlier Board panel held that these references are in
the same field of endeavor, namely database management and transferring
data between databases. Bd. Dec. 7. In any event, Appellants’ argument
regarding whether Epstein’s metabase structural modifications are
compatible with a data replication environment (App. Br. 7) is unavailing,
for Epstein transfers data about these modifications to users, and Bodnar
teaches transferring updated data to another database for entry as noted
above. In short, the Examiner’s combination of references predictably uses
prior art elements according to their established functions—an obvious
improvement. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007).

4 Although the earlier Board panel affirmed the Examiner’s obviousness
rejection over Carley, Epstein, and Kopcha, the panel’s findings and
conclusions regarding Carley and Epstein are nonetheless applicable here.
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We are therefore not persuaded that the Examiner erred in rejecting
representative claim 1, and claims 2-26 not separately argued with
particularity.

THE OBVIOUSNESS REJECTION OVER CARLEY, EPSTEIN, AND KOPCHA
Since Appellants do not contest the Examiner’s rejection of claims 1-
26 over Carley, Epstein, and Kopcha (Ans. 16-25) in the Appeal Brief (see
App. Br. 4-7; Ans. 3-4 (noting this omission)), we summarily sustain this
rejection. See MPEP § 1205.02 (“If a ground of rejection stated by the
examiner is not addressed in the appellant’s brief, that ground of rejection
will be summarily sustained by the Board.”).
According to Appellants, arguments pertaining to this rejection were
included in the Appeal Brief filed May 26, 2009 and were inadvertently
omitted from the most recent Appeal Brief filed September 2, 2010. Reply
Br. 4. Appellants then add arguments to the Reply Brief pertaining to this
rejection in an attempt to cure this defect. Reply Br. 4-6.
But the Appeal Brief filed May 26, 2009 was the first of three briefs
filed in connection with three successive appeals after the earlier Board
decision. The first appeal was taken from the Examiner’s Final Rejection
mailed January 21, 2009 based on rejections over (1) Carley, Epstein, and
Kopcha, and (2) Carley, Epstein, and Robertson. See App. Br. filed May 26,
2009. Following this brief, the Examiner reopened prosecution by entering
new grounds of rejection over Carley, Epstein, and Midgley. Final Rej.
mailed Sept. 3, 2009. Appellants then appealed this rejection. See App. Br.
Filed December 30, 2009. After this brief, the Examiner again reopened
prosecution by entering additional new grounds of rejection based on (1)
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Carley, Epstein, and Bodnar, and (2) Carley, Epstein, and Kopcha. Fin. Rej.
mailed Apr. 7, 2010. Notably, it is this Final Rejection from which the
present appeal is taken.
Despite this somewhat complicated and piecemeal prosecution
history, once the Examiner entered new grounds of rejection and reopened
prosecution following an appeal brief, that action effectively ended that
appeal for all practical purposes. Reinstating an appeal under these
circumstances requires filing a new notice of appeal followed by an appeal
brief—as was twice done here. See MPEP § 1207.04. Accord MPEP
§ 1204.01. Although the Examiner reinstated the previously-abandoned
rejection based on Carley, Epstein, and Kopcha in the most recent Final
Rejection, and Appellants previously presented arguments pertaining to that
rejection in an earlier appeal, it is incumbent on Appellants to present
arguments pertaining to every ground of rejection for review in this appeal
particularly where, as here, there are different appeals based on different
grounds of rejection and different prior art. See MPEP 1205.02:
It is essential that the Board be provided with a brief fully stating the
position of the appellant with respect to each ground of rejection
presented for review in the appeal so that no search of the record is
required in order to determine that position. Thus, the brief should not
incorporate or reference previous responses.

By not including arguments from an earlier appeal in the present
appeal brief, Appellants waived those arguments in this appeal despite their
belated presentation for the first time in this appeal in the Reply Brief. See
Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative)
(“[T]he reply brief [is not] an opportunity to make arguments that could
have been made in the principal brief on appeal to rebut the Examiner’s
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rejections, but were not.”). Accordingly, we will not consider these belated
arguments.
We therefore summarily sustain the Examiner’s rejection of claims 1-
26 over Carley, Epstein, and Kopcha.

CONCLUSION
The Examiner did not err in rejecting claims 1-26 under § 103.

ORDER
The Examiner’s decision rejecting claims 1-26 is affirmed.
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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