Ex Parte Burdick et al

Board of Patent Appeals and Interferences

Apr 3, 2009

10385536 (B.P.A.I. Apr. 3, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DOUGLAS R. BURDICK, STEVEN ROSTEDT,
and ROBERT J. SZCZERBA
__________

Appeal 2008-1066
Application 10/385,536
Technology Center 2100
__________

Decided:1 April 6, 2009
__________

Before LANCE LEONARD BARRY, CAROLYN D. THOMAS, and
STEPHEN C. SIU, Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-17. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm in part.

The Invention
The disclosed invention relates generally to representation of record
sets (Spec. 1). Specifically, a system introduces a bitmap-based data
structure for representation of record sets of a record collection such that
basic operations may be used to perform set operations (id. at 9).
Independent claim 1 is illustrative:
1. A system for representing data during a data cleansing
application, said system comprising:
a record collection, each record in said collection
including a list of fields and data contained in each said field;
a predetermined sequence of operations to be performed
on said record collection;
a plurality of bit-maps representing said record
collection;
a partitioned sequence of operations for parallel
processing of said bit-maps by a plurality of separate devices.

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The Reference
The Examiner relies upon the following reference as evidence in
support of the rejection:
Charles Bontempo, et al., The IBM Data Warehouse Architecture,
Communications of the ACM, Vol. 41, No. 9, at 38-48 (1998)
(“Bontempo”).

The Rejection
The Examiner rejects claims 1-17 under U.S.C. § 102(b) as being
anticipated by Bontempo.

ISSUE #1
The Examiner rejects claims 1-17 as being anticipated by Bontempo
(Ans. 7).
Appellants assert that Bontempo “does not provide [an] adequately
enabling disclosure” because “Bontempo et al. is merely a marketing paper”
(App. Br. 7), “Bontempo et al. speaks in very general terms and aggregates
many concepts” (id.), and because Bontempo discusses “these [high level]
concepts on the very highest level” (id.). Hence, Appellants argue that “it
would be necessary for one of ordinary skill in the art to perform at the very
least undue experimentation [given the Bontempo disclosure]” (id.).
Did Appellants demonstrate that the Bontempo disclosure fails to
enable possession of the disclosed subject matter to one of skill in the art
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such that a person of skill in the art would have needed to engage in undue
experimentation to practice the Bontempo disclosure?
FINDINGS OF FACT
The following Findings of Facts (FF) are shown by a preponderance
of the evidence.
1. Bontempo discloses a “data warehouse architecture” (p. 40, col. 1).
2. Bontempo discloses that “[d]ata is . . . cleansed . . . in preparation for
warehouse processing” (p. 41, col. 1).
3. Bontempo discloses mapping “SQL statements into low-level
operations” and optimizing “for parallel processing to achieve
improved query performance” (p. 44, col. 1).
4. Bontempo discloses the use of “various forms of balanced tree
indexing, including B-trees” (p. 45, col. 1).
5. Bontempo discloses “[a]voidance of excessive storage management
costs for large static bitmaps” (id.).

PRINCIPLES OF LAW
Enablement of a Prior Art Reference
“The disclosure in an assertedly anticipating reference must be
adequate to enable possession of the desired subject matter. It is insufficient
to name or describe the desired subject matter, if it cannot be produced
without undue experimentation.” Elan Pharmaceuticals, Inc. v. Mayo
Foundation for Medical Education and Research, 346 F.3d 1051, 1055 (Fed.
Cir. 2003). Undue experimentation may be established by consideration of
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(1) the quantity of experimentation necessary, (2) the amount of direction or
guidance presented, (3) the presence or absence of working examples, (4)
the nature of the invention, (5) the state of the prior art, (6) the relative skill
of those in the art, (7) the predictability or unpredictability of the art, and (8)
the breadth of the claims. (Id.).
The patentee asserting non-enablement has the burden of
demonstrating non-enablement of a disputed reference. Amgen Inc. v.
Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003) (“If a
patentee presents evidence of nonenablement that a trial court finds
persuasive, the trial court must then exclude that particular prior art patent in
any anticipation inquiry . . . [t]herefore, it was [the Plaintiff] who bore the
burden of proving the nonenablement of . . . [the cited reference] before the
district court . . . [the Defendant] did not bear a burden of proving
enablement.”).

35 U.S.C. § 102
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis
Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).
“Anticipation of a patent claim requires a finding that the claim at issue
‘reads on’ a prior art reference.” Atlas Powder Co. v. IRECO, Inc., 190 F.3d
1342, 1346 (Fed Cir. 1999) (“In other words, if granting patent protection on
the disputed claim would allow the patentee to exclude the public from
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practicing the prior art, then that claim is anticipated, regardless of whether
it also covers subject matter not in the prior art.”) (Internal citations
omitted).

ANALYSIS (ISSUE #1)
We find that Appellants have failed to provide a showing that
Bontempo would have been insufficient to enable one of skill in the art to
practice the Bontempo system and method without undue experimentation.
Because Appellants, as the party asserting non-enablement of the reference,
bears the burden of showing non-enablement but have failed to do so, we
cannot find that Bontempo would have been non-enabling to one of skill in
the art. Amgen Inc., 314 F.3d at 1355.
Appellants argue that Bontempo “is merely a marketing paper” (App.
Br. 7). First, Appellants fail to provide evidence that Bontempo is indeed a
“marketing paper.” Second, even assuming that Bontempo is “merely a
marketing paper” as Appellants assert, Appellants have failed to demonstrate
that a marketing paper per se is non-enabling. In the absence of evidence
supporting the contention that all marketing papers are non-enabling, we
decline to conclude that Bontempo is non-enabling even if Bontempo is, in
fact, a marketing paper.
Appellants argue that Bontempo “speaks in very general terms and
aggregates many concepts” (id.). Here also, while Appellants assert that
Bontempo is “general” and “aggregates many concepts,” Appellants have
nevertheless failed to provide specific evidence in support of the contention.
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Without such a showing, we decline to conclude that Bontempo is indeed
overly “general” to one of skill in the art or that Bontempo excessively
“aggregates many concepts.”
Even assuming that the Bontempo reference is “general” or
“aggregates many concepts,” as Appellants assert, Appellants still fail to
establish that the Bontempo disclosure would have necessitated one of skill
in the art to engage in undue experimentation to practice the disclosure. For
example, Appellants have failed to assess and provide evidence to establish
the level of skill in the art in relation to the degree of specificity disclosed in
Bontempo. Indeed, Appellants have failed to provide any analysis at all to
support the contention that one of skill in the art would need to engage in
undue experimentation, given the Bontempo disclosure. Therefore, even
assuming that the Bontempo disclosure is “general” or “aggregates many
concepts,” we cannot agree with Appellants that, even under such
circumstances, Bontempo would have been non-enabling to one of skill in
the art.
Appellants argue that Bontempo discusses “concepts on the very
highest level” (App. Br. 7). However, Appellants fail to establish that the
level at which Bontempo discusses concepts is such that it would have
required one of skill in the art to have practiced undue experimentation to
achieve the system or method of Bontempo. For example, Appellants fail to
demonstrate the level of one of skill in the art in relation to the level of
disclosure of Bontempo.
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For at least the aforementioned reasons, we conclude that Appellants
have not sustained the requisite burden on appeal in providing arguments or
evidence persuasive of error in the Examiner’s rejection of claims 1-17 with
respect to issue #1.

ISSUE #2
Appellants assert that “the data warehouse architecture of Bontempo
et al. does not operate on data during a data cleansing application (App. Br.
17).
The Examiner finds that the “Visual Warehouse as seen on Fig. 3 is
used [to] manage both the extraction and cleansing process. Therefore the
extraction of data in a parallel fashion (as is claimed in claim 1 also) from a
plurality of devices is part of the cleansing process” (Ans. 13).
Did Appellants demonstrate that the Examiner erred in finding that
Bontempo represents data during a data cleansing application?

ANALYSIS (ISSUE #2)
While Appellants do not dispute that Bontempo discloses a system or
method including providing a record collection, providing a predetermined
sequence of operations, creating bit-maps, and partitioning the sequence of
operations as recited in claims 1 and 6, Appellants assert that Bontempo fails
to disclose the intended use limitation of the system or method “for
representing data during a data cleansing application” (App. Br. 17) as
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recited only in the preamble of claims 1 and 6, and dependent claims 2-5, 7-
10, 16, and 17.
Because the preamble of claim 1 and 6 and corresponding dependent
claims merely states a purpose or intended use of the invention of
“representing data during a data cleansing application” that is not specific to
and does not depend on, support, or otherwise “breathe life and meaning”
into the features or steps recited in the body of claim 1 or claim 6 or
corresponding dependent claims, we find that the recited preamble does not
limit the scope of the claim. “The preamble of a claim does not limit the
scope of the claim when it merely states a purpose or intended use of the
invention.” In re Paulsen, 30 F.3d 1475, 1479 (Fed. Cir. 1994). “While the
preamble is not normally considered part of the claim, it is deemed part of
the claims where necessary to breathe ‘life and meaning’ into the claims.”
In re Burke Inc., 786 F. Supp. 1537, 1541 (C.D. Cal. 1992) (emphasis
added) (quoting Corning Glass Works v. Sumitomo Electric U.S.A., 868 F.2d
1251 (Fed. Cir. 1989)).
Also, Appellants have not demonstrated why the preamble phrase of
“for representing data during a data cleansing application,” must be
considered a limitation, particularly in the absence of a recitation of
representing data, executing a data cleansing application, or the relationship
between representing data and the data cleansing application in the body of
the claim.
For at least the aforementioned reasons, we conclude that Appellants
have not sustained the requisite burden on appeal in providing arguments or
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evidence persuasive of error in the Examiner’s rejection of claims 1-10, 16,
and 17 with respect to issue #2.

ISSUE #3
Appellants assert that “the data warehouse architecture of Bontempo
et al. does not operate to cleanse data. Data cleansing is done separately”
(App. Br. 26). Hence, Appellants argue that Bontempo fails to disclose each
limitation of claim 11.
Did Appellants demonstrate that the Examiner erred in finding that
Bontempo discloses a computer program product that operates to cleanse
data as recited in claim 11?

ANALYSIS (ISSUE #3)
Bontempo discloses that “[d]ata is . . . cleansed . . . in preparation for
warehouse processing” (p. 41). We agree with the Examiner that Bontempo
discloses a system and method that operates to cleanse data, given the
explicit disclosure in Bontempo.
Appellants argue that in Bontempo, “[d]ata cleansing is done
separately” (App. Br. 26). We find no relevance in Appellants’ assertion
because claim 11 does not require that data cleansing not be done separately.
Indeed, claim 11 does not require data cleansing at all other than as an
intended use recited in the preamble of claim 11. As set forth above, the
“preamble of a claim does not limit the scope of the claim when it merely
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states a purpose or intended use of the invention.” In re Paulsen, 30 F.3d at
1479.
For at least the aforementioned reasons, we conclude that Appellants
have not sustained the requisite burden on appeal in providing arguments or
evidence persuasive of error in the Examiner’s rejection of claims 11-15
with respect to issue #3.

ISSUE #4
Appellants assert that Bontempo fails to disclose “the plurality of bit-
maps are stored in a balanced binary tree structure” (App. Br. 38) because “a
B-tree may be unbalanced” (id.) and “Bontempo et al. does not disclose a
balanced binary tree structure” (id.). Hence, Appellants assert that the tree
structure disclosed by Bontempo is not balanced as recited in claim 17.
The Examiner finds that “Bontempo teaches, ‘DB2 DBMSs use
various forms of balanced tree indexing, including B-trees, to enhance data
access’ (page 45, Col.1)” (Ans. 22).
Did Appellants demonstrate that the Examiner erred in finding that
Bontempo discloses a balanced binary tree structure?

ANALYSIS (ISSUE #4)
Bontempo discloses the use of “various forms of balanced tree
indexing, including B-trees” (p. 45). As such, Bontempo discloses that the
tree structure is a “balanced tree.” We disagree with Appellants that the tree
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structure disclosed by Bontempo is not balanced given the explicit
disclosure in Bontempo that the tree structures are balanced.
For at least the aforementioned reasons, we conclude that Appellants
have not sustained the requisite burden on appeal in providing arguments or
evidence persuasive of error in the Examiner’s rejection of claim 17 with
respect to issue #4.

ISSUE #5
Appellants assert that “Bontempo et al. does not disclose reordering
operations or use of intermediate outputs” (App. Br. 9).
The Examiner finds that “Bontempo teaches a query . . . divided into a
plurality of low-level operations . . . and pipelined to a plurality of devices
(i.e., parallel processing; page 44, col. 1)” (Ans. 14) and concludes that “the
original sequence of query steps is already reordered for query optimization”
(id.).
Did Appellants demonstrate that the Examiner erred in finding that
Bontempo discloses including a reordered sequence of operations optimizing
the user of intermediate outputs of the operations?

ANALYSIS (ISSUE #5)
Bontempo discloses mapping “SQL statements into low-level
operations” and optimizing “for parallel processing to achieve improved
query performance” (p. 44). Hence, Bontempo discloses a system receiving
SQL statements and performing “low-level” operations utilizing the received
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SQL statements. However, the Examiner has not demonstrated that
Bontempo also discloses including a reordered sequence of operations
optimizing the use of intermediate outputs of the operations. We find no
evidence, and the Examiner has not provided a showing, that the SQL
statements include “a reordered sequence of operations” as recited in claims
2-5, 7-10, and 12-15.
Accordingly, we conclude that Appellants have met their burden of
showing that the Examiner erred in rejecting dependent claims 2-5, 7-10,
and 12-15 with respect to issue #5.

ISSUE #6
Appellants assert that Bontempo fails to disclose that “each bit-map is
stored in a data structure that allows only parts of the bit-map to be stored”
because “Bontempo et al. certainly does not disclose use of only parts of bit-
maps” (App. Br. 36).
The Examiner finds that “Bontempo teaches ‘No need for compaction
and decompaction of very sparse bitmaps’ (page 45, col. 1). Therefore,
Bontempo teaches that DB2 supports sparse bitmap structure, and all
bitmaps (i.e., indexes) are stored at the database system or otherwise the
search would not be possible without indexes” (Ans. 22).
Did Appellants demonstrate that the Examiner erred in finding that
Bontempo discloses bit-maps stored in a data structure that allows only parts
of the bit-map to be stored, as recited in claim 16?

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ANALYSIS (ISSUE #6)
The Examiner finds that, in Bontempo, “all bitmaps . . . are stored at
the data base system” (Ans. 22). However, even though the Examiner finds
that the system of Bontempo stores all bitmaps, the Examiner does not
demonstrate that Bontempo also discloses that a data structure allows only
parts of the bit-map to be stored, rather than all bitmaps, as required by
claim 16.
Accordingly, we conclude that Appellants have met their burden of
showing that the Examiner erred in rejecting claim 16 with respect to issue
#6.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellants have failed to demonstrate that the Bontempo disclosure fails to
enable possession of the disclosed subject matter to one of skill in the art
(issue #1). We also conclude that Appellants have failed to demonstrate that
the Examiner erred in finding that:
1. Bontempo represents data during a data cleansing application
(issue #2),
2. Bontempo discloses a computer program product that operates
to cleanse data as recited in claim 11 (issue #3), and
3. Bontempo discloses a balanced binary tree structure (issue #4).
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However, Appellants have demonstrated that the Examiner erred in
finding that:
1. Bontempo discloses including a reordered sequence of
operations optimizing the user of intermediate outputs of the operations
(issue #5) and
2. Bontempo discloses bit-maps stored in a data structure that
allows only parts of the bit-map to be stored, as recited in claim 16 (issue
#6).

DECISION
We affirm the Examiner’s decision rejecting claims 1, 6, 11, and 17
under 35 U.S.C. § 102. We reverse the Examiner’s decision rejecting claims
2-5, 7-10, and 12-16 under 35 U.S.C. § 102.
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-IN-PART

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BARRY, Administrative Patent Judge, concurring.

I concur with my colleagues and also write separately to further
address the Appellants' following argument.
Bontempo et al. is merely a marketing paper and does not
provide adequately enabling disclosure of the system recited in
[the] claim[s] . . . . Bontempo et al. speaks in very general
terms and aggregates many concepts, discussing these concepts
on the very highest level. It is respectfully submitted that it
would be necessary for one of ordinary skill in the art to
perform at the very least undue experimentation, and more
likely overt hindsight modification utilizing Applicant's
disclosure, in order to result in the system recited by [the]
claim[s] . . . .
(App. Br. 7-8.) The Examiner offers the following response.
Applicant makes this allegation without any evidence to
support this position. Bontempo clearly provides a data
warehousing architecture with detailed figures and detailed
discussion about various components of the figures. Therefore
the prior art of Bontempo clearly provides an enabling
disclosure. The reference may have some marketing aspects,
but that does not prevent it from being an enabling disclosure.
(Answer 13.)

ISSUE
Therefore, the issue I address is whether the Appellants have shown
that Bontempo would not have enabled one skilled in the art to make and use
the claimed invention without undue experimentation.

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LAW
"To be enabling under § 112, a patent must contain a description that
enables one skilled in the art to make and use the claimed invention." Atlas
Powder Co. v. E. I. Du Pont de Nemours & Co., 750 F.2d 1569, 1576 (Fed.
Cir. 1984) (citing Raytheon Co. v. Roper Corp., 724 F.2d 951, 960 (Fed. Cir.
1983)). "That some experimentation is necessary does not preclude
enablement; the amount of experimentation, however, must not be unduly
extensive." Id. (citing W.L. Gore & Associates, Inc. v. Garlock, Inc.,
721 F.2d 1540, 1557 (Fed. Cir. 1983); In re Angstadt, 537 F.2d 498, 503
(CCPA 1976)).

"Whether undue experimentation is needed is not a single, simple
factual determination, but rather is a conclusion reached by weighing many
factual considerations." In re Wands, 858 F.2d 731, 737 (Fed.Cir. 1988).
"Factors to be considered in determining whether a disclosure would require
undue experimentation" id. "include (1) the quantity of experimentation
necessary, (2) the amount of direction or guidance presented, (3) the
presence or absence of working examples, (4) the nature of the invention,
(5) the state of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth of the
claims." Id. These factors are "commonly referred to as 'the Wands factors'"
Warner-Lambert Co. v. Teva Pharm. USA, Inc., 418 F.3d 1326, 1337 (Fed.
Cir. 2005) and "are a useful methodology for determining enablement . . . ."
Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1372 (Fed. Cir. 1999).
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FINDINGS OF FACT
6. Bontempo is an article in Communications of the ACM.

7. Communications of the ACM is "the leading print and online
publication for the computing and information technology fields" and "the
most trusted and knowledgeable source of industry information for today’s
computing professional." About Communications, http://cacm.acm.org/
about-communications (2009).

ANALYSIS
Here, the Appellants failed to address the Wands factors.
Furthermore, I find no indication that they considered any of the factors.
Discussion by the Appellants of the Wands factors would have been useful
to us in resolving the aforementioned issue. Because a reference "need not
teach, and preferably omits, what is well known in the art," Hybritech Inc. v.
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986) (citing
Lindemann Maschinenfabrik v. American Hoist and Derrick, 730 F.2d 1452,
1463 (Fed. Cir. 1984)), discussion of "the state of the prior art" Wands, 858
F.2d at 737, would have been particularly helpful to us. Because enablement
is determined from the perspective of "one skilled in the art," Atlas Powder,
750 F.2d at 1576 (citing Raytheon Co., 724 F.2d at 960), moreover,
discussion of "the relative skill of those in the art," Wands, 858 F.2d at 737,
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and "the predictability or unpredictability of the art," id., would also have
been particularly helpful.

Of course, "it is not necessary that a court review all the Wands
factors to find a disclosure enabling. They are illustrative, not mandatory."
Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1213 (Fed.Cir. 1991).
The two arguments that the Appellants chose to make in lieu of a discussion
of the Wands factors, however, were not as helpful as such a discussion
would have been.

First, the Appellants allege that "Bontempo et al. is merely a
marketing paper . . . ." (App. Br. 7.) As found by my colleagues, supra, the
"Appellants fail to provide evidence that Bontempo is indeed a 'marketing
paper.'" Contrary to the Appellants' allegation, the reference appears to be
an article in Communications of the ACM. (FF 6.) Communications of the
ACM is "the leading print and online publication for the computing and
information technology fields" and "the most trusted and knowledgeable
source of industry information for today’s computing professional." (FF 7.)

Even if Bontempo were a "marketing paper" as alleged, I question the
relevance of such a finding. As noted by colleagues supra, the "Appellants
have failed to demonstrate that a marketing paper per se is non-enabling."
Regardless of the type of publication, moreover, I agree with the Examiner
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that although "[t]he reference may have some marketing aspects, . . . that
does not prevent it from being an enabling disclosure." (Answer 13.)

Second, the Appellants argue that "Bontempo et al. speaks in very
general terms . . . discuss[es] . . . concepts on the very highest level." (App.
Br. 7.) The law that "a patent need not teach, and preferably omits, what is
well known in the art" Hybritech, 802 F.2d at 1384 (citing Lindemann
Maschinenfabrik, 730 F.2d at 1463) evidences how useful a discussion by
the Appellants of the state of the prior art and the relative skill of those in the
art would have been. As found by my colleagues, supra, however, the
"Appellants have failed to assess and provide evidence to establish the level
of skill in the art in relation to the degree of specificity disclosed in
Bontempo." Absent such a discussion, the mere fact that the reference may
speak in general terms and discuss concepts at a high level is unpersuasive
of lack of enablement.

CONCLUSION
Based on the aforementioned facts and analysis, I conclude that the
Appellants have not shown that Bontempo would not have enabled one
skilled in the art to make and use the claimed invention without undue
experimentation.

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