Ex Parte Bittner et al

Patent Trial and Appeal Board

May 18, 2016

12165549 (P.T.A.B. May. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/165,549 06/30/2008
47069 7590 05/20/2016
KONRAD RA YNES DAVDA & VICTOR, LLP
ATTN: IBM54
350 SOUTH BEVERLY DRIVE, SUITE 360
BEVERLY HILLS, CA 90212
FIRST NAMED INVENTOR
Torsten Bittner
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.
S VL920080046US 1 2056
EXAMINER
PEACH, POLINA G
ART UNIT PAPER NUMBER
2165
NOTIFICATION DATE DELIVERY MODE
05/20/2016 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):
krvuspto@ipmatters.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TORSTEN BITTNER, HOLGER KACHE, MARY ANN ROTH,
and Y ANNICK SAILLET
Appeal2014-008540
Application 12/165,549
Technology Center 2100
Before JOSEPH L. DIXON, ELENI MANTIS MERCADER, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOW ARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-28, which constitute all of the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify International Business Machines Corporation as the
real party in interest. App. Br. 1.
Appeal2014-008540
Application 12/165,549
THE INVENTION
The claimed invention is directed to a method for discovering
transformations that had previously been applied to a source table to
generate a target table. Abstract, Spec. i-f 10.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method, comprising:
selecting a source table in a computer readable storage
medium comprising a plurality of rows and a target table in the
computer readable storage medium resulting from a
transformation applied to the rows of the source table;
applying a first pre-processing method with respect to
columns in the source and target tables to produce first category
pre-processing output;
using the first category pre-processing output to determine
first category transformation rules with respect to at least one
source table column and at least one target table column to
predict values in the target table from values in the source table;
determining at least one unpredicted target column in the
target table comprising at least one target column determined not
to be predicted by the first category transformation rules;
for the at least one unpredicted target column, applying a
second pre-processing method to the at least one unpredicted
target column and the columns in the source table to produce
second category pre-processing output; and
using the second category pre-processing output to
determine second category transformation rules with respect to
the at least one unpredicted target table column.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
I Lennon et al. I US 2004/0015783 Al I Jan. 22, 2004
2
Appeal2014-008540
Application 12/165,549
Pinto et al.
Yarnms
Baris et al.
US 2005/0234688 Al
US 6,973,459B1
US 2008/0243823 Al
REJECTIONS
Oct. 20, 2005
Dec. 6, 2005
Oct. 2, 2008
Claims 1-10 and 12-25 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lennon in view ofYarmus. Final Act 3-18.
Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lennon in view of Yarmus and Pinto. Final Act. 18.
Claims 26, 27, and 28 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lennon in view of Y armus and Baris. Final Act.
19-20.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments that the Examiner erred. In reaching this decision, we consider
all evidence presented and all arguments made by Appellants.
The Examiner finds Lennon teaches or suggests the limitations recited
in the first using step. Final Act. 4; Ans. 21-23. More specifically, the
Examiner finds Lennon teaches "that before any mappings a pre-processing
is applied to both source and target data to make sure the data is compatible.
Such preprocessing includes converting both the source and target data into
a numeric or textual format or converting to ether [sic] lower or upper case."
Ans. 21.
Appellants argue the Examiner erred in reading Lennon and finding
that Lennon teaches the first using step. App. Br. 9-10. Instead, Appellants
argue Lennon teaches data views, transformations and the presentation of
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Appeal2014-008540
Application 12/165,549
data, none of which teach "using first category pre-processing output to
determine first category transformation rules to predict values in target table
from source table" as recited in claim 1. Id. In support of their arguments,
Appellants discuss the teachings contained in each of the paragraphs the
Examiner cites in support of the rejection. See App. Br. 9-10; Reply Br. 1-
2.
Appellants have persuaded us that the Examiner erred. The sections
of Lennon relied on by the Examiner discusses ways to eliminate display
types to determine appropriate views to view data. However, the cited
sections do not teach the first using step as recited in claim. See App. Br. 9-
10; Reply Br. 1-2.
Because we agree with at least one of the dispositive arguments
advanced by Appellants, we need not reach the merits of Appellants' other
arguments.
Accordingly, we are constrained on this record to reverse the
Examiner's rejection of claim 1, along with the rejections of claims 16 and
21, which are argued on the same ground, and dependent claims 2-15, 17-
20, and 22-28.2
2 In the event of further prosecution, including any review for allowance, we
invite the Examiner's attention to the question of whether the claims are
patent-eligible under 35 U.S.C. § 101. Alice Corp. Pty. Ltd. v. CLS Bank
Int'!, 134 S. Ct. 2347, 2355-56 (2014). Regarding at least method claim 1, a
question arises as to whether a person would be capable of performing the
contested steps or acts as mental steps, or with the aid of pen and paper. See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir.
2011) ("That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court
in Gottschalk v. Benson"). Moreover, "a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
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Appeal2014-008540
Application 12/165,549
DECISION
For the above reasons, we reverse the Examiner's rejection of claims
1-28.
REVERSED
under§ 101." CyberSource, 654 F.3d at 1373. We have decided the issues
before us. We leave further consideration of this § 101 issue to the
Examiner. Although 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 MPEP 1213.02.
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