Ex parte Butler et al.Download PDFBoard of Patent Appeals and InterferencesNov 29, 200108567447 (B.P.A.I. Nov. 29, 2001) Copy Citation 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The opinion in support of the decision entered today (1) was not written for publication in a law journal and (2) is not binding precedent of the Board.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 Appeal No. 2000-0935 Application 08/567,447 2 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 A rejection of claim 15 as being directed to non- statutory subject matter has been withdrawn by the examiner.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 A previous rejection of claim 15 under 35 U.S.C. § 101 as being directed to non-statutory subject matter has been withdrawn by the examiner.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: Appeal No. 2000-0935 Application 08/567,447 3 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; Appeal No. 2000-0935 Application 08/567,447 4 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 Appeal No. 2000-0935 Application 08/567,447 5 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 Appeal No. 2000-0935 Application 08/567,447 6 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 Appeal No. 2000-0935 Application 08/567,447 7 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 Appeal No. 2000-0935 Application 08/567,447 8 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 Appeal No. 2000-0935 Application 08/567,447 9 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 Appeal No. 2000-0935 Application 08/567,447 10 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. Appeal No. 2000-0935 Application 08/567,447 11 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. Appeal No. 2000-0935 Application 08/567,447 12 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 Copy with citationCopy as parenthetical citation