Ex Parte BishopDownload PDFPatent Trials and Appeals BoardJun 21, 201912648523 - (D) (P.T.A.B. Jun. 21, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/648,523 12/29/2009 26890 7590 JAMES M. STOVER TERADATA US, INC. P.O. Box 190 Englewood, OH 45322 06/25/2019 FIRST NAMED INVENTOR William Bishop 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. 20353 3965 EXAMINER RICHARDSON, JAMES E ART UNIT PAPER NUMBER 2167 NOTIFICATION DATE DELIVERY MODE 06/25/2019 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): michelle. boldman @teradata.com j ames.stover@teradata.com td.uspto@outlook.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WILLIAM BISHOP Appeal2017-007329 Application 12/648,523 1 Technology Center 2100 Before LARRY J. HUME, CATHERINE SHIANG, and JOHN P. PINKERTON, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1-4, which are all claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is Teradata US, Inc. App. Br. 2. Appeal2017-007329 Application 12/648,523 STATEMENT OF THE CASE2 The Invention Appellants' disclosed embodiments and claimed invention relate to "[a] computer system is used to manage content in a database system that stores data representing data elements defined by a logical data model. For at least one of multiple business functions to be carried out with the database system, the computer system ( 1) identifies a total amount of data elements required to carry out the business function, (2) identifies an amount of common data elements that are required to carry out both the business function and another of the multiple business functions, (3) creates information that indicates a percentage of the total amount of data elements that are also common data elements, and ( 4) delivers the information for presentation to a human use. Spec. 13 ("Abstract"). Representative Claim Claim 1, reproduced below, is representative of the subject matter on appeal ( emphases added to contested prior-art limitation): 1. A computer-implemented method for enabling a user at a user terminal to manage content in a database system that stores data representing entities defined by a logical data model, the method comprising: for at least one of multiple business functions to be carried out with the database system: 2 Our decision relies upon Appellant's Appeal Brief ("App. Br.," filed Oct. 19, 2016); Reply Brief ("Reply Br.," filed Apr. 10, 2017); Examiner's Answer ("Ans.," mailed Feb. 10, 2017); Final Office Action ("Final Act.," mailed Apr. 19, 2016); and the original Specification ("Spec.," filed Dec. 29, 2009). 2 Appeal2017-007329 Application 12/648,523 [ ( 1)] identifying a total amount of entities defined by said logical data model required to carry out the business function; [(2)] identifying an amount of common entities defined by said logical data model that are required to carry out both the business function and another of the multiple business functions; and [(3)] creating information that indicates a percentage of the total amount of entities defined by said logical data model that are also common entities defined by said logical data model; and delivering the information to the user terminal for presentation to the user. Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: Dettinger et al. ("Dettinger") US 2005/0289100 Al Dec. 29, 2005 Kellet et al. ("Kellet") US 2006/0230028 Al Oct. 12, 2006 Rejections on Appeal3 Rl. Claims 1 and 4 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Dettinger. Final Act. 2. R2. Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Dettinger and Kellet. Final Act. 3. 3 In the event of further prosecution of this application, we invite the Examiner's attention to determine whether claims 1-4 meet the patent- eligibility requirements under 35 U.S.C. § 101 in view of the USPTO's Revised Guidance for subject matter eligibility. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (https://www.govinfo.gov/content/pkg/FR-2019-01-07/pdf/2018-28282.pdf). 3 Appeal2017-007329 Application 12/648,523 Prior Decision on Appeal The Board rendered a Decision on Appeal on September 24, 2015 in which we affirmed the Examiner's rejection of claims 1 and 4 as being anticipated by Dettinger, and affirmed the rejection of claims 2 and 3 as being obvious over the combination of Dettinger and Kellet. CLAIM GROUPING Based on Appellant's arguments (App. Br. 4-8) and our discretion under 37 C.F.R. § 41.37(c)(l)(iv), we decide the appeal of anticipation Rejection Rl of claims 1 and 4 on the basis of representative claim 1. Remaining claims 2 and 3 in obvious Rejection R2, not argued separately, stand or fall with independent claim 1 from which they depend. 4 ISSUES AND ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellant. To the extent Appellant has not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. 37 C.F.R. § 41.37(c)(l)(iv). We disagree with Appellant's arguments with respect to claim 1 and, unless otherwise noted, we incorporate by reference herein and adopt as our own: ( 1) the findings and reasons set forth by the Examiner in the action 4 "Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately." 37 C.F.R. § 41.37( c )(1 )(iv). In addition, when Appellants do not separately argue the patentability of dependent claims, the claims stand or fall with the claims from which they depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986). 4 Appeal2017-007329 Application 12/648,523 from which this appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in response to Appellant's arguments. We highlight and address specific findings and arguments regarding claim 1 for emphasis as follows. 1. § 102(b) Rejection Rl of Claims 1 and 45 Issue 1 Appellant argues (App. Br. 4-8; Reply Br. 2-3) the Examiner's rejection of claim 1 under 35 U.S.C. § 102(b) as being anticipated by Dettinger is in error. These contentions present us with the following dispositive issue: Did the Examiner err in equating the presently recited and allegedly narrower "entities defined by a logical model" with the previously recited phrase "data elements" and, as a result, did the Examiner further err in 5 In the event of further prosecution, we invite the Examiner's attention to claim 1, as amended, because Appellant has replaced "data elements" with "entities defined by logical data model" in the claims on appeal. While both "data elements" and "entities defined by logical data model" are described in the Specification (see, e.g., Spec. 4, 11. 22-29; Fig. 2), the Specification is unclear as to whether there is adequate written description support under 35 U.S.C. § 112, first paragraph, for using the recited "entities defined by logical data model" in the manner claimed. See, e.g., App. Br. 3 ("Summary of Claimed Subject Matter," citing Spec. 6, 1. 23-7, 1. 19; Figs. 4-6). For purposes of this Appeal, and in light of Appellant's Specification, we construe "entities defined by logical data model" as comprising "data elements" or attributes. See Fig. 2. While the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects not to do so. See Manual of Patent Examining Procedure (MPEP) § 1213.02. 5 Appeal2017-007329 Application 12/648,523 finding Dettinger discloses the recited "entities" and limitations related thereto?"6 Analysis During prosecution, claims must be given their broadest reasonable interpretation when reading claim language in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard, we interpret claim terms using "the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant's specification." In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Prior to amendment during prosecution after our previous Decision on Appealed mailed Sept. 24, 2015, claim 1 recited "data elements," whereas amended claim 1 on Appeal replaced "data elements" with "entities defined by said logical data model." In particular, limitations (1) through (3) of appealed claim 1 now recite: 6 Although Appellant appears to argue each of the "identifying a total amount of entities," "identifying an amount of common entities," and "creating information that indicates a percentage of the total amount of entities" limitations (App. Br. 4-5), in light of our previous Decision on Appeal mailed September 24, 2015 and the Examiner's current rejection in light of the Specification, we find the dispositive issue to be determined by the broadest reasonable interpretation of the disputed phrase "entities defined by a logical data model." See App. Br. 7. 6 Appeal2017-007329 Application 12/648,523 (1) "[I]dentifying a total amount of entities defined by said logical data model required to carry out the business function." (2) "[I]dentifying an amount of common entities defined by said logical data model that are required to carry out both the business function and another of the multiple business functions." (3) "[C]reating information that indicates a percentage of the total amount of entities defined by said logical data model that are also common entities defined by said logical data model." Claim 1. The Examiner finds Dettinger discloses "identifying a total amount of entities defined by said logical data model required to carry out the business function." Final Act. 3 ( citing Dettinger Figs. 5A, 5B; ,i,i 70-72, 74). "The total amount of results, i.e. entities defined by said logical data model required to complete the query, i.e. carry out the business function, are identified." Id. The Examiner further determined: [T]he Office Action is not equating query elements to the claimed entities defined by the logical data model, but instead the results returned by the queries of Dettinger. Results of the queries are database records. Database records are maintained in accordance with at least a schema or equivalent as is well known in the art and also described by Dettinger (Dettinger [0039]), i.e. a logical data model, that defines how the objects that make up a record are related. Additionally, Applicant's specification in describing entities defined by a logical data model states "the logical data model 200 defines entities 2201-B that each specifies a grouping of data objects in a manner that preserves relationships among those objects" (Pg. 4, Lines 25- 27). As such, objects in a database being grouped into records such that their relationships are maintained is equivalent to the claimed entities defined by a logical data model at least when 7 Appeal2017-007329 Application 12/648,523 those records are being returned by queries, i.e. business functions. Final Act. 8-9. Thus, the Examiner is equating Dettinger' s query results, i.e., data or information, with the claimed "entities defined by the logical data model." Appellant contends, "[i]t is not seen that any of these query elements are equivalent to the entities defined by a logical data model described in the specification, and recited in amended claim 1 .... The invention of claim 1 operates on entities defined by a logical data model, not query elements or query results." App. Br. 7. Appellant further argues: [T]he Examiner equates the terms "entities defined by a logical data model" with the term "data elements" contained in earlier versions of the claims. It is not seen that the term "entities defined by a logical data model" as described in the specification, illustrated in Figure 2, and understood by those skilled in the art, can be equated with the much broader term "data elements". The "entities defined by a logical data model" are specific structures within a logical data model which define how data is stored within a database, and clearly not elements of queries or query results as described in Dettinger. Accordingly, it is believed that independent claim 1, as well as claim 4 which depends from claim 1, are patentable over Dettinger. App. Br. 7-8.7 7 On this record, and contrary to Appellant's contention (App. Br. 8), we note there is no evidence that a person with skill in the art would interpret the claimed "entities defined by a logical data model" as being narrower than the previously recited "data elements" or, conversely, that the previously claimed "data elements" are broader than the recited "entities," 8 Appeal2017-007329 Application 12/648,523 SUB1ECT ARE~ SUBJECT ARE.~. Figure 2 of Dettinger illustrates a diagram showing a logical data model for use in organizing data within the data warehouse. particularly in light of Appellant's description of the relationship of these elements. See. e.g., Fig. 2 and related disclosure, Spec. 4. 9 Appeal2017-007329 Application 12/648,523 Figure 3 of Dettinger illustrates a diagram showing a model for grouping the data elements of the logical data model according to the various business questions that they answer and for grouping the business questions into multiple business functions to which they are relevant. The Examiner responds to Appellant's contentions as follows: Since the "data elements" in the original claims previously affirmed were already modified with the language "defined by a logical data model" ... Appellant has effectively merely changed the terms "data elements" to "entities". Appellant's claim does [not] provide any explicit and limiting definition to the term "entities", and Appellant's specification also does not provide any explicit and limiting definition to the term "entities". This lack of limiting definition is clearly evidenced by Appellant's failure to recite any specific language stating otherwise, and [ Appellant] merely recit[ es] Appellant's specification broadly and generically point[ s] to Fig. 2 .... [T]he Office Action is not equating query elements to the claimed entities defined by the logical data model, but instead [to] the results returned by the queries of Dettinger. Results of the queries are database records. Database records are maintained in accordance with at least a schema, or equivalent, as is well known in the art of databases, and is also described by Dettinger ... as a structure that defines how the objects that make up a record are related. Additionally, and analogously, Appellant's specification in describing possible entities defined by a logical data model states "the logical data model ... defines entities ... that each specifies a grouping of data objects in a manner that preserves relationships among those objects" (Pg. 4, Lines 25-27). Likewise, database records, such as those returned as results in Dettinger, are entities of grouped data objects contained in one or more fields that are defined by the schema such that the data in the one or more fields that are related to each other, e.g. in a row, are kept together to maintain their relationships to each other. Thus, results returned by Dettinger are equivalent to the claimed entities defined by a 10 Appeal2017-007329 Application 12/648,523 logical data model at least when those records are results of queries, i.e. business functions. Appellant states that '"entities defined by a logical data model' are specific structures within a logical data model which define how data is stored within a database" but provides no details whatsoever as to what these "specific structures" actually are other than they broadly define how data is stored within a database, and simply argues, without any rationale, that it is "clearly" different than Dettinger. Ans. 3-5. In reply, Appellant argues: The term "data elements" recited in claims 1 through 4 was replaced with the language "entities defined by a logical data model" or "entities defined by said logical data model" in an amendment ... to more specifically define the invention recited in the claims and distinguish the claimed invention from the cited prior art. It is believed that the language "entities defined by a logical data model" or "entities defined by said logical data model" is much narrower than the term "data elements" contained in the original version of the claims. The Decision on Appeal ... affirmed a prior final rejection of claims 1 through 4 by applying the broadest reasonable meaning for the term "data elements" recited in the claims. It is believed that the amendments to the claims, wherein the term "data elements" has been replaced with the specific language "entities defined by a logical data model" or "entities defined by said logical data model", overcomes the rejection of claims 1 and 4 under 35 U.S.C. § 102(b) as being anticipated by Dettinger. Reply Br. 2-3. In construing claim 1, we tum to Appellant's specification for context. According to Appellant's Specification, "attributes" (or "data elements") make up "entities," and "entities" make up "subject areas." See Fig. 2; Spec. 4, 11. 22-29. Further, comparing Appellant's Figures 2 and 3, it is clear that 11 Appeal2017-007329 Application 12/648,523 "subject areas" of Figure 2 relate to the "business functions" of Figure 3; "entities" of Figure 2 relate to "business questions" of Figure 3; and "attributes ( or data elements)" of Figure 2 may be viewed as equivalent to the "data elements" of Figure 3. Still further, FIG. 2 shows a logical data model ... [that] defines one or more subject areas []. Within each subject area ... the logical data model ... defines entities ... [where] each [entity] specifies a grouping of data objects in a manner that preserves relationships among those objects. The logical data model also defines attributes ... ( or "data elements") that make up each of the entities. Spec. 4, 11. 22-29. Appellant cited support in page 6, line 23 through page 9, line 8, and Figures 4 through 6 of the Specification for limitations ( 1) through (3). App. Br. 3. Appellant's Specification, in portions cited by Appellant for support, states: FIGS. 4, 5 and 6 together illustrate through example a computer-implemented technique for performing data-overlap analysis ... involv[ing] three primary steps: (1) creating a mapping of the various business questions [ or entities] to be answered and the attributes ( or data elements) required to answer them (FIG. 4); (2) creating a mapping of the various business functions [ or subject areas] ... and the business questions [ or entities] that must be answered for each of them (FIG. 5); and (3) calculating, for each pair of business functions [ or subject areas], the percentage of data elements required by one business function [or subject area] that are present if all data elements requiredfor the other business function [or subject area] are present (FIG. 6). Spec. 6-7 (emphasis added). Furthermore: [T]he computer system calculates the total number of data elements required to carry out each business function [ or 12 Appeal2017-007329 Application 12/648,523 subject area]. The computer system also calculates the total number of common data elements between each pair of business functions [ or subject areas]. The computer system then calculates ... the ratio of common data elements between the two business functions [ or subject areas] to total data elements required by the business function [ or subject area] ... and stores this ratio in the cell as a percentage. Spec. 8 ( emphasis added). Therefore, contrary to Appellant's contentions regarding a more narrow construction (App. Br. 7-8), we conclude the phrase "entities defined by a logical data model" is broader than the previously recited "data elements" because, under the broadest reasonable interpretation, "data elements" may reasonably be interpreted as a subset of "entities. "8 Furthermore, Appellant's Specification, at least in the portions quoted above and cited as providing support for the claimed subject matter, does not appear to support replacing "data elements" with "entities defined by said logical data model" when carrying out limitations (1) through (3) of method claim 1. While Appellant's Specification discloses that "data elements" make up "entities" ( or "business questions"), it is silent to the role of "entities defined by said logical data model" ( or "business questions defined by said logical data model") in carrying out these limitations. Nowhere in Appellant's Specification can it be found that the computer system calculates: (1) the total number of entities defined by said logical data model required to carry out each business function [or subject area]; (2) the total number of common entities defined by said logical data model between each pair of business functions [ or subject areas]; and (3) the ratio of 8 We view the relationship between the disclosed "entities" and "data elements" as roughly analogous to a genus-species relationship. 13 Appeal2017-007329 Application 12/648,523 common entities defined by said logical data model between the two business functions [ or subject areas] to total entities defined by said logical data model. However, Appellant's Specification, as well as original claim 1, clearly supports the role of "data elements" in place of "entities defined by said logical data model" in limitations (1) through (3). Therefore, under the broadest reasonable interpretation standard, we construe "entities defined by said logical data model" of claim 1 to encompass the disclosed and recited "data elements" in claim 1. We are not persuaded by the Appellant's arguments in either the Appeal Brief or the Reply Brief because Appellant merely contends: "[T]he 'entities defined by a logical data model' are specific structures within a logical data model which define how data is stored within a database, and clearly not elements of queries or query results as described in Dettinger." App. Brief. 8. The Appeal Brief does not explain why "entities defined by a logical data model" are "clearly not elements of queries or query results as described in Dettinger," and the Reply Brief does not shed any more light on this issue. Thus, we agree with the Examiner's finding that Dettinger discloses "identifying a total amount of entities defined by said logical data model required to carry out the business function," as recited in claim 1. Ans. 5. We agree with the Examiner because neither claim 1 nor the Specification provide an explicit definition of the term "entity defined by logical data model."9 Appellant has merely replaced the term "data 9 The Specification states, "the logical data model ... defines entities ... [where] each [entity] specifies a grouping of data objects in a manner that preserves relationships among those objects." Spec. 4. However, the 14 Appeal2017-007329 Application 12/648,523 elements" of original claim 1 with the term "entities defined by logical data model" in claim 1, apparently to distinguish over the prior art in the previous rejection addressed by our earlier Decision. In light of the disclosure in Appellant's Specification, we have construed the term "entity defined by logical data model" of claim 1 to broadly, but reasonably encompass "data elements" of original claim 1. Under this construction, nothing has changed substantively in the claim language and, in consideration of our previous Decision on Appeal mailed September 24, 2015, we come to the same determination in this Appeal that claim 1 is anticipated by Dettinger. We also agree with the Examiner that even assuming, arguendo, the term "entities defined by logical data model" does not have the same meaning as the term "data elements," Dettinger still discloses "identifying a total amount of entities defined by said logical data model required to carry out the business function," as recited in claim 1. As noted by the Examiner, Dettinger discloses: The queries ... are defined for execution against data ... in the database . . . [ where t ]he database ... is representative of any collection of data regardless of the particular physical representation. For example, the data ... may represent tables ( and their respective contents) defined by columns and rows. Dettinger ,-J 3 9. We are persuaded by the Examiner's claim construction equating "entities defined by the logical data model," where, according to Appellant's Specification, each entity specifies a grouping of data objects in a manner that preserves relationships among those objects, of claim 1 with Specification is unclear with respect to "data objects." Therefore, the definition is unclear with respect to "entities." 15 Appeal2017-007329 Application 12/648,523 "results returned by the queries," where the results are database records, and a database record is a structure that defines how the objects that make up a record are related, of Dettinger. Ans. 4. Therefore, based upon the findings above, on this record, we are not persuaded of error in the Examiner's reliance on the cited prior art to disclose the disputed limitation of claim 1, nor do we find error in the Examiner's resulting finding of anticipation. Accordingly, we sustain the Examiner's anticipation rejection of independent claim 1, and grouped claim 2, which falls therewith. See Claim Grouping, supra. 2. Rejection R2 of Claims 2 and 3 In view of the lack of any substantive or separate arguments directed to obviousness Rejection R2 of claims 2 and 3 under § 103 (see App. Br. 8-9), we sustain the Examiner's rejection of these claims. Arguments not made are waived. 10 REPLY BRIEF To the extent Appellants may advance new arguments in the Reply Brief (Reply Br. 2-3) not in response to a shift in the Examiner's position in the Answer, arguments raised in a Reply Brief that were not raised in the Appeal Brief or are not responsive to arguments raised in the Examiner's 10 Appellants merely argue, "[The] deficiencies of Dettinger are not cured by Kellet. Accordingly, it is believed that claims 2 and 3 are patentable over the cited references to Dettinger and Kellet." App. Br. 9. 16 Appeal2017-007329 Application 12/648,523 Answer will not be considered except for good cause (see 37 C.F.R. § 41.4l(b)(2)), which Appellants have not shown. CONCLUSIONS (1) The Examiner did not err with respect to anticipation Rejection Rl of claims 1 and 4 under 35 U.S.C. § 102(b ), and we sustain the rejection. (2) The Examiner did not err with respect to obviousness Rejection R2 of claims 2 and 3 under 35 U.S.C. § 103(a) over the cited prior art combination of record, and we sustain the rejection. DECISION We affirm the Examiner's decision rejecting claims 1-4. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv). S'ee 37 C.F.R. § 41.50(±). AFFIRMED 17 Copy with citationCopy as parenthetical citation