Ex Parte Cameron

Patent Trial and Appeal Board

Dec 23, 2016

12903917 (P.T.A.B. Dec. 23, 2016)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/903,917 10/13/2010 Scott Cameron 2058.560US1 4867
50400 7590 12/28/2016
SCHWEGMAN LUNDBERG & WOESSNER/SAP
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
LIN, SHEW FEN
ART UNIT PAPER NUMBER
2166
NOTIFICATION DATE DELIVERY MODE
12/28/2016 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):
uspto@slwip.com
SLW @blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT CAMERON
Appeal 2016-0008861
Application 12/903,9172
Technology Center 2100
Before JOSEPH L. DIXON, JOYCE CRAIG, and
SCOTT E. BAIN, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 3—6, 9, 10, 12—15, 18, 19, 21—24, and 27, which
constitute of all the claims pending in this application.3 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Appeal Brief is not paginated. Therefore, we refer to page numbers as
if the Appeal Brief were numbered consecutively beginning with the first
page.
2 According to Appellant, the real party in interest is Business Objects
Software Ltd. App. Br. 2.
3 Claims 2, 7, 8, 11, 16, 17, 20, 25, and 26 have been canceled. Final Act. 2.
Appeal 2016-000886
Application 12/903,917
INVENTION
Appellant’s invention relates to dynamically generating a metadata
file from file fragments. Spec. 1. Claim 1 is illustrative and reads as
follows:
1. A system, comprising:
a processor-implemented query module configured to:
identify a master metadata file; and
retrieve at least one metadata fragment file from a
communicatively connected metadata repository, the at least one
metadata fragment file having a global identifier matching a
global identifier of the master metadata file;
a processor-implemented generator module configured to:
combine the master metadata file and the at least one
metadata fragment file to form a combined metadata file, the
combining of the master metadata file and the at least one
metadata fragment file including resolving conflicting property
attributes among the master metadata file and the at least one
metadata fragment file using an ownership rule, the ownership
rule to identify one of the master metadata file and the at least
one metadata fragment file as the owner of a respective property
attribute, the conflicting property attributes including a structure
containing a nested set of property attributes, wherein an owner
of a lower level nested property attribute of the nested set of
property attributes possesses a right to create, modify, and delete
only the lower level property attribute, and wherein an owner of
the structure containing the nested set of property attributes
possesses a right to create, modify, and delete the structure of
the nested set of property attributes and unowned nested
property attributes in the nested set of property attributes',
generate a metadata entity from the combined metadata
file, the metadata entity including property attributes and
property attribute values designated as being owned in each of
the master metadata file and the at least one metadata fragment
file; and
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Application 12/903,917
a processor-implemented installer module configured to install
the generated metadata entity for consumption by at least one
application.
REJECTIONS
Claims 1, 3—6, 9, 10, 12—15, 18, 19, 21—24, and 27 stand rejected
under 35U.S.C. § 112, second paragraph, as indefinite. Final Act. 2.
Claims 1, 3—6, 9, 10, 12—15, 18, 19, 21—24, and 27 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over the combination of Sood et al.
(US 2009/0024589 Al, published Jan. 22, 2009) (“Sood”), Thompson et al.
(US 2007/0061350 Al, published Mar. 15, 2007) (“Thompson”), and
Freeman et al. (US 2001/0049717 Al, published Dec. 6, 2001) (“Freeman”).
Final Act. 4.
ANALYSIS
We have considered Appellant’s arguments, but do not find them
persuasive of error. We agree with and adopt as our own the Examiner’s
findings of facts and conclusions as set forth in the Answer and in the Action
from which this appeal was taken, to the extent consistent with our analysis
below. We provide the following explanation for emphasis.
Rejection of Claims 1, 3—6, 9, 10, 12—15, 18, 19, 21—24, and 27
as Indefinite under 35 U.S.C. § 112, second paragraph
In rejecting claim 1 as indefinite, the Examiner found that, because
“two owners both have right to create, modify, and delete the lower level
property attribute, it is unclear how the conflicting is resolved.” Final Act.
3. The Examiner further found it is unclear to what the recited “unowned
nested property attributes in the nested set of property attributes” refers. Id.
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Application 12/903,917
Appellant contends the Examiner’s indefiniteness rejection is
erroneous because it is based on the incorrect assumption that an owner of a
structure must own all elements contained within the structure. App. Br. 7.
Appellant further argues that the plain meaning of the recited term
“unowned” makes the claim language clear. Id.
We disagree. Appellant relies on the plain meaning of the claim term
“unowned” and argues that “[wjithin the recited ‘nested set of property
attributes,’ some are owned and some are not.” Id. In the Summary of
Claimed Subject Matter section of the Appeal Brief, however, Appellant
points to paragraph 23 of the Specification. App. Br. 3. Paragraph 23 states
in part:
Conflicts may be resolved and minimized by having each
property in a DFO belong to a single owner file (e.g., a master
file or a fragment file). Thus, the master or fragment file
designated as the owner of the property is solely responsible for
creating, modifying, and deleting the value of the property.
Spec. 123. Thus, paragraph 23 describes each property belonging to an
owner. Appellant also points to paragraphs 27 and 28 of the Specification,
which describes examples of ownership rules that may be used to resolve
conflicts between properties. App. Br. 3. None of the examples of
ownership rules in paragraph 28, however, describes nested properties that
do not have an owner. See Spec. 28.
Thus, we agree with the Examiner that the claims, viewed in light of
the Specification, do not inform those skilled in the art about the scope of the
invention with reasonable certainty. Ans. 3. In particular, we agree with the
Examiner that it is not clear whether the recited “unowned nested property
attributes” refer to nested property attributes that have no owner, or those not
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Application 12/903,917
owned by either or both of the two owners recited in the claim. See id. “[I]f
a claim is amenable to two or more plausible claim constructions, the
USPTO is justified in requiring the applicant to more precisely define the
metes and bounds of the claimed invention by holding the claim
unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.” Ex
parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential).
Accordingly, we sustain the rejection of independent claim 1 under
35 U.S.C. § 112, second paragraph, as well as the 35 U.S.C. § 112 rejection
of independent claims 10 and 19, which contain similar limitations and
which Appellant argues are patentable for similar reasons. App. Br. 6—7.
We also sustain the Examiner’s rejection of dependent claims 3—6, 9, 12—15,
18, 21—24, and 27, not argued separately. Id.
Rejection of Claims 1, 3—6, 9, 10, 12—15, 18, 19, 21—24, and 27
as Obvious under 35 U.S.C. § 103(a)
Appellant contends the Examiner erred in finding that Thompson
teaches the limitation “an owner of the structure containing the nested set of
property attributes possesses a right to create, modify, and delete ... unowned
nested property attributes in the nested set of property attributes,” recited in
claim 1.
Having determined that claims 1, 3—6, 9, 10, 12—15, 18, 19, 21—24,
and 27 are unpatentable under 35 U.S.C. § 112, second paragraph, for
indefmiteness because the limitation “unowned nested property attributes in
the nested set of property attributes” is amenable to more than one
interpretation, we reverse the rejection of these claims under 35 U.S.C.
§ 103(a), because a determination of obviousness would require speculation
as to the scope of the claims. See In re Steele, 305 F.2d 859, 862—63 (CCPA
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Application 12/903,917
1962) (holding that the Board erred in affirming a rejection of indefinite
claims under 35 U.S.C. § 103(a), because the rejection was based on
speculative assumptions as to the meaning of the claims).
Thus, we reverse the Examiner's rejection of claims 1, 3—6, 9, 10, 12—
15, 18, 19, 21—24, and 27 for obviousness because that ground of rejection is
necessarily based on speculative assumptions as to the meaning of the
disputed limitation in the claims. It should be understood, however, that our
decision in this regard is based solely on the indefmiteness of the claimed
subject matter and does not reflect on the adequacy of the prior art evidence
applied in support of the Examiner's rejection.
DECISION
We affirm the decision of the Examiner rejecting claims 1, 3—6, 9, 10,
12—15, 18, 19, 21—24, and 27 under 35 U.S.C. § 112 as indefinite.
We reverse the decision of the Examiner rejecting claims 1, 3—6, 9,
10, 12—15, 18, 19, 21—24, and 27 under 35 U.S.C. § 103(a) as obvious over
the combination of Sood, Thompson, and Freeman.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's decision is affirmed. See
37 C.F.R. § 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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