Ex parte Butler et al.

Board of Patent Appeals and Interferences

Nov 29, 2001

08567447 (B.P.A.I. Nov. 29, 2001)

Application for patent filed December 5, 1995. The real party in interest1
is Electronic Data Systems Corporation.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision entered today (1) was not written for publication
in a law journal and (2) is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
__________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________________
Ex parte KATHY E. BUTLER and GEORGE K. SERGENT

Appeal No. 2000-0935
Application 08/567,4471

ON BRIEF

Before SCHAFER, LEE and MEDLEY, Administrative Patent Judges.
LEE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the examiner’s rejection of appellants’ claims 1-3, 6, 7, and
12-18. Claims 8-11 have been allowed.
References relied on by the Examiner
Johnson 5,493,490 Feb. 20, 1996
Spencer 5,577,241 Nov. 19,
1996
The Rejection on Appeal
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Claims 1, 3, 6-7, 12-14 and 16-18 stand rejected under 35
U.S.C. § 103 as being unpatentable for obviousness over
Spencer.
Claim 2 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Spencer and Johnson.
A rejection of claim 15 as being directed to non-
statutory subject matter has been withdrawn by the examiner.
The Invention
The claimed invention is directed to a business
information repository system (independent claim 1), a method
for processing business information (independent claim 12),
and a population engine operable to parse raw business
information data and suggest key words to be used to access
abstracts of the raw business information data (independent
claim 14).
A previous rejection of claim 15 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter has been
withdrawn by the examiner.
Independent claims 1, 12 and 14 are reproduced below:
1. A business information repository system
accessible by a user, comprising:
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a control system coupled to a user interface
accessible to the user;
a search engine coupled to the control system
and operable to access a business information
database;
the business information database comprising a
plurality of data repositories, each data repository
storing a plurality of abstracts of information
associated with activities of the business;
a data storage system operable to store raw
business data associated with the plurality of
abstracts of information stored in the data
repositories of the business information database;
and
a data access manager coupled to the control
system and operable to access the data storage
system and to retrieve the raw business data
responsive to requests from the user.
12. A method of processing business information
comprising the steps of:
storing key word tables and accessing the key
word tables through a search engine;
parsing raw business information associated with
past business activities to create abstracts of the
raw business information;
storing the abstracts of the business
information in a business information database;
linking the abstracts of the business
information to the key word tables within the search
engine;
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accessing the business information database
using the search engine to retrieve abstracts of
past business activity; and
retrieving the raw business information using a
data access manager to access data storage
facilities storing the raw business information.
14. A population engine accessible to selected
users and operable to parse raw business information
data and suggest key words to be used to access
abstracts of the raw business information data.

Discussion
A reversal of the rejection on appeal should not be
construed as an affirmative indication that the appellants’
claims are patentable over prior art. We address only the
positions and rationale as set forth by the examiner and on
which the examiner’s rejection of the claims on appeal is
based.
In the context of claim 12, raw business information is
parsed to provide “abstracts” of raw business information, and
those abstracts are stored in a business information database.
In the context of claim 1, a plurality of data repositories
exist each storing a plurality of “abstracts” of information
associated with business activities and the raw business data
associated with the abstracts are stored in a data storage
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system. In the context of claim 14, the method produces key
words to be used for accessing “abstracts” of raw business
information data. It is indisputable that the applicants’
claimed invention relate to “abstracts” of raw business data
or information.
The applicants’ specification does not specially define
the term “abstract.” Thus, the term takes on its ordinary
meaning, as a noun, and as pointed out by the applicants in
their appeal brief, citing The American Heritage Dictionary,
1985:
1. A statement summarizing the
important parts of a given text.
2. The concentrated essence of a
larger whole.
That meaning is also consistent with the meaning of an
“Abstract” in the context of a patent application.
In applying the Spencer reference against the applicants’
claims, the examiner does not identify in Spencer the storage
of any “abstract” which provides a summary or essence of
associated business data or information. Rather, the examiner
merely identifies with respect to Spencer’s database that:
“the query structure is based on an abstract base class of
query nodes.” In that regard, the applicants explain in the
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appeal brief that the term “abstract” as used in the context
of Spencer is not the same as the term “abstract” as used in
the context of their rejected claims. The applicants state
(Br. at 7-8):
Spencer provides for an informational
retrieval system written in some type of
programming language such as an object-
oriented language like C++. When Spencer
discusses an abstract class, it does so in
the computer science sense to mean a set of
objects that share a common structure and
behavior. Certain classes, like abstract
classes can be used to derive new classes.
For example, Spencer indicates “QueryNode
203 class is an abstract class from which
specific QueryNode subclasses can be
derived.” Spencer, column 6, lines 7-9.
Also, Spencer states “Because the QueryNode
203 class is an abstract class, it provides
the basis of the extensible query
architecture by allowing the applications
programmer to implement new query models
specifically designed to meet the search
needs of the user, or the database
environment by deriving new NodeCreator 201
.x and QueryNode 203 .x classes from the
respective base classes.” Spencer, column
6, lines 12-21. Indeed, in the abstract of
Spencer, the line quoted by the Examiner
and the next line together state “The query
architecture is based on an abstract base
class of query nodes, or code objects that
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retrieve records from the database.
Specific subclasses for particular query
nodes are derived from the base class.”
Additionally, the term Abstract Class
is defined as “In object-oriented
programming, a class designed only as a
parent from which sub-classes may be
derived, but which is not itself suitable
for instantiation. Often used to “abstract
out” incomplete sets of features which may
then be shared by a group of sibling sub-
classes which add different variations of
the missing pieces.” (The On-Line Computer
Dictionary, which can be found at http:
//wombat.doc.ic.ac.uk/foldoc/index.html).
The above quotations from Spencer
illustrates that when Spencer uses the term
“abstract base class”, it is using it in
the computer science sense.
Despite the succinct challenge from the applicants about
the term “abstract” being used differently in Spencer as it is
in the context of the applicants’ claims, the examiner gives
no adequate explanation for regarding Spencer’s “abstract base
class” of query nodes in object-oriented programming language
the same as the applicants’ “abstracts” of business
information. In the answer at 5-6, the examiner states:
Since the query that retrieve records from
the database is “abstract base”, the data
that is stored in the database is obviously
abstract base as well. Therefore, a data
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repository that stores abstract of
information is met by Spencer.
In light of the applicants’ argument, the burden has shifted
to the examiner to establish that the same word is not being
used differently in Spencer as it is in the appellants’
specification. That, however, the examiner has not done. The
above-quoted text from the examiner’s answer begs the
question, ignores the applicants’ position, and simply assumes
that there is no difference between how the term “abstract” is
being used.
The fundamental question raised by the applicants, i.e.,
why is an “abstract class” of query nodes in object-oriented
programming language such as C++, which essentially represent
only incomplete sets of features to which unique
characteristics must be added to define real classes of
objects, the same as an “abstract” (in the sense of a summary
of particular features) of raw business data, has not been
addressed by the examiner. The applicants’ argument raises a
very good point: “it seems as if the Examiner is attempting to
find similar words in a reference and convolute that wording
into a hindsight rejection of Applicants’ invention” (Br. at
8). Proper examination entails more than a search for the
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presence of identical key words. It should be noted that in
the English language often even the same word would have
opposite meanings in different contexts. These words are
sometimes known as autoantonyms, contronyms, or antagonyms.
Examples are: “cleave,” “buckle,” “clip,” “oversight,”
“sanction,” and “replace.” We are not suggesting that the
word “abstract” is of that nature here, but only find that the
examiner has not met his burden in establishing that an
“abstract base class” of query nodes as described in Spencer
constitutes an “abstract” as is claimed by the applicants.
Based on the applicants’ argument, it cannot simply be assumed
that an “abstract base class” of query nodes provides an
abstract in the sense of a summary of particulars.
As is pointed out by the applicants, the term “abstract”
as used in the specification is in the nature of a noun. The
same word in either “abstract class” or “abstract base class”
is an adjective. It should be noted that while an “abstract”
of a document or publication gives the notable particulars of
the document or publication, an “abstract” painting is vague
and is not expected to provide particulars. It is uncertain
how an “abstract class” of virtual objects which require
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additional attachments or definition to take on an identity
can be deemed an abstract in the sense of a summary of
particulars of the item.
In this connection, the examiner has failed to make out a
satisfactory showing or explanation.
On page 8 of the answer, the examiner makes the following
statement:
Further, regarding the argument that “Spencer does
not show abstract of business information”, it would
have been obvious to one of ordinary skill in the
art at the time of the invention to have store
abstract of business information in Spencer’s system
because “abstract of business information” is a
descriptive material which is not functionally
related to the method of storing, searching,
accessing and retrieving information in a database.
Also, storing abstract of business information will
not distinguish the invention from the prior art in
terms of patentability (see Cf. In re Gulack, 703
F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983))
(Emphasis in original).
The examiner’s position is misplaced. The appellants do
not simply claim storing abstracts of business information.
According to independent claim 1, the information stored in a
business information database must relate in a certain way to
the data separately maintained in a data storage system.
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According to independent claims 8 and 14, raw business
information must be parsed to yield key words usable for
accessing abstracts of that information. According to
independent claim 12, raw business information must be parsed
to create abstracts to be stored in a database and a search
engine is provided to access key words in a table that is
linked to the stored abstracts. These features have not been
accounted for by the examiner. Moreover, with regard to the
“business” aspect of information, the examiner has not pointed
to “abstracts” of any type of information, in the prior art
applied in the rejections, business or otherwise.
For the foregoing reasons, the rejection of claims 1, 3,
6-7, 12 and 14 under 35 U.S.C. § 103 as being unpatentable for
obviousness over Spencer cannot be sustained, and the
rejection of claim 2 under 35 U.S.C. § 103 as being
unpatentable for obviousness over Spencer and Johnson also
cannot be sustained.
Conclusion
The rejection of claims 1, 3, 6-7, 12-14 and 16-18 under
35 U.S.C. § 103 as being unpatentable for obviousness over
Spencer is reversed.
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Application 08/567,447
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The rejection of claim 2 under 35 U.S.C. § 103 as being
unpatentable over Spencer and Johnson is also reversed.
REVERSED
RICHARD E. SCHAFER )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JAMESON LEE ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
SALLY C. MEDLEY )
Administrative Patent Judge )
Attorney for the appellant:
David G. Wille, Esq.
BAKER & BOTTS, L.L.P.
2001 Ross Avenue
Dallas, Texas 75201-2980