Ex Parte Cu et al

Board of Patent Appeals and Interferences

Feb 24, 2010

09820451 (B.P.A.I. Feb. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JASON ALEXANDER CU,
CHRISTOPHER JOHN CRONE,
and ANDREI FEDOROVICH LURIE
____________

Appeal 2009-000772
Application 09/820,451
Technology Center 2100
____________

Decided: February 24, 2010
____________

Before JAMES D. THOMAS, LANCE LEONARD BARRY, and
HOWARD B. BLANKENSHIP, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-26, which are all of the pending claims in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
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Invention
Appellants’ invention relates to a method and system for utilizing a
column function for a relational database in a structure query language
(SQL) environment. The column function is capable of performing an
operation on an indeterminate number of entries. The relational database
utilizes data including a plurality of entries capable of being organized into
at least one column and at least one row. The method and system include
allowing a user to specify the at least one row as an argument for a
generalized scalar function and simulating a column environment for the at
least one row using the generalized scalar function to allow the at least one
row to be provided to the column function as though the at least one row was
a column. The method and system also include performing the column
function on the at least one row to provide at least one output. Abstract.

Representative Claim
1. A method for utilizing a column function for a relational
database in a structure query language (SQL) environment, the
column function capable of performing an operation on an
indeterminate number of entries, the relational database utilizing data
including a plurality of entries being organized into at least one
column and at least one row, the method comprising the steps of:
(a) allowing a user to specify the at least one row as an
argument for a generalized scalar function;
(b) simulating a column environment for the at least one row
using the generalized scalar function to allow the at least one row to
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be provided to the column function as though the at least one row was
a column; and
(c) performing the column function on the at least one row to
provide at least one output.

Prior Art
Melton 6,289,336 B1 Sep. 11, 2001

Examiner’s Rejections
Claims 1-26 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
Claims 1-26 stand rejected under 35 U.S.C. § 112, second paragraph
as being indefinite for failing to particularly point out and distinctly claim
the subject matter which applicant regards as the invention.
Claims 1-26 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Melton.
The Examiner’s objection to the Specification is a matter for petition,
not a ground of rejection for review on appeal. See Manual of Patent
Examining Procedure (MPEP) §§ 706.01, 1002.02(c), and 1201 (Eighth ed.,
Rev. 7, Jul. 2008).

ISSUES
(1) Have Appellants shown that the Examiner erred in concluding
that claim 1 does not recite statutory subject matter?
(2) Have Appellants shown that the Examiner erred in concluding
that claims 1 and 6 are indefinite?
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(3) Have Appellants shown that the Examiner erred in finding that
Melton discloses a column function as recited in claim 1?

ANALYSIS -- § 101
Claim Grouping
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal with respect to the § 101 rejection on the basis of claim 1. See 37
C.F.R. § 41.37(c)(1)(vii).

Section 101 rejection of claim 1
“Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.” 35 U.S.C. § 101. “[N]o patent is available for a
discovery, however useful, novel, and nonobvious, unless it falls within one
of the express categories of patentable subject matter of 35 U.S.C. § 101
. . . .” Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 483 (1974).
If claim 1 is directed to statutory subject matter, the claim falls within
the statutory class of “process.” A process is “an act, or a series of acts,
performed upon the subject matter to be transformed and reduced to a
different state or thing.” Cochrane v. Deener, 94 U.S. 780, 788 (1877).
“Transformation and reduction of an article ‘to a different state or thing’ is
the clue to the patentability of a process claim that does not include
particular machines.” Diamond v. Diehr, 450 U.S. 175, 184 (1981) (quoting
Gottschalk v. Benson, 409 U.S. 63, 70 (1972)).
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Our reviewing court recently held that the “useful, concrete and
tangible result” inquiry, first set forth in In re Alappat, 33 F.3d 1526, 1544
(Fed. Cir. 1994) (en banc), is inadequate to determine whether a claim is
patent-eligible under 35 U.S.C. § 101. See In re Bilski, 545 F.3d 943, 959-
60 (Fed. Cir. 2008) (en banc) cert. granted, 129 S. Ct. 2735 (U.S. June 1,
2009) (No. 08-964). The Supreme Court’s “machine-or-transformation test,
properly applied, is the governing test for determining patent eligibility of a
process under § 101.” Id. at 956. “A claimed process is surely patent-
eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or
(2) it transforms a particular article into a different state or thing.” Id. at
954.
Appellants do not appear to argue that the method is tied to a
particular machine or apparatus. Appellants contend that claim 1 provides a
function in a computer system. Appellants have not shown that the
computer system is a particular machine, rather than a general purpose
computer system.
Claim 1, however, also fails the second branch of the “machine-or-
transformation” test. The claim does not contain or require an article that is
transformed and reduced “to a different state or thing.” See Diamond v.
Diehr, 450 U.S. at 184.
In Bilski, our reviewing court identified a circumstance in which
electronic transformation of data into a particular visual depiction of a
physical object on a display may be considered a transformation sufficient to
render a claimed process patent-eligible. See Bilski, 545 F.3d at 962-63
(discussing In re Abele, 684 F.2d 902, 908-09 (CCPA 1982)). Even if the
method of claim 1 were limited to being implemented on a general purpose
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computer, “simulating a column environment” and “performing the column
function on the at least one row to provide at least one output” does not
appear to be a type of data “transformation” that is recognized by our
reviewing court, or by the U.S. Supreme Court, sufficient to render a
claimed method patent-eligible.
The inquiry into whether a given claim would pre-empt all uses of a
fundamental principle (i.e., law of nature, natural phenomenon, or abstract
idea) is “hardly straightforward.” Bilski, 545 F.3d at 954; see also id. at 952
n.5. However, the Supreme Court’s “machine-or-transformation” test
determines “whether a process claim is tailored narrowly enough to
encompass only a particular application of a fundamental principle rather
than to pre-empt the principle itself.” Id. at 954. As claim 1 fails the
“machine-or-transformation” test, the claim pre-empts a fundamental
principle, rather than being limited to a particular application of the
principle.

Section 101 rejection of claims 8, 15, and 25
Appellants’ remarks in support of independent claims 8, 15, and 25
are not sufficient for separate consideration of the claims under the
applicable rules. See Br. 14-15; cf. 37 C.F.R. § 41.37(c)(1)(vii). However,
we make the following observations.
Claim 25 is a method claim, which would be subject to the same
analysis with respect to whether “(1) it is tied to a particular machine or
apparatus, or (2) it transforms a particular article into a different state or
thing.” Bilski, 545 F.3d at 954.
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Claim 8 purports a “computer-readable medium containing a
program.” The Specification states (at 11:7-9), unequivocally, that a
“computer-readable medium” is intended to include a computer readable
signal that can be transmitted over a network. A transitory, propagating
signal is not statutory subject matter because it does not fall within any of
the four categories of statutory subject matter. See In re Nuijten, 500 F.3d
1346, 1357 (Fed. Cir. 2007). Claim 8 and its dependent claims are thus not
directed to statutory subject matter because the claims encompass a signal.
According to Appellants, “[c]laim 15 recites an analogous [to claim 1]
system that includes a column function, a generalized scalar function and an
interface.” Br. 14. Appellants do not allege that the “system” of claim 15 is
statutory because it falls within a particular statutory class (e.g., machine or
manufacture). Moreover, the claim appears so broad (see, e.g., instant Fig.
5) as to encompass mere software modules for the “user interface” and the
two “functions.” Software per se or a computer program per se does not fall
within a statutory class. “The four categories [of § 101] together describe
the exclusive reach of patentable subject matter. If a claim covers material
not found in any of the four statutory categories, that claim falls outside the
plainly expressed scope of § 101 even if the subject matter is otherwise new
and useful.” Nuijten, 500 F.3d at 1354. See also MPEP § 2106.01, heading
I (“USPTO personnel should treat a claim for a computer program, without
the computer-readable medium needed to realize the computer program’s
functionality, as nonstatutory functional descriptive material.”).

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Section 101 -- Conclusion
Based on our consideration of representative claim 1, we conclude
that claims 1-26 are not directed to statutory subject matter in accordance
with 35 U.S.C. § 101.

ANALYSIS -- § 112
Section 112, second paragraph rejection of claims 1, 8, and 15
The Examiner finds that the structure of the claimed generalized
scalar function recited in claims 1, 8, and 15 is unknown. The Examiner
further asks how could the generalized scalar function transform the at least
one row to simulate a column environment for the row as though the row
was a column. Ans. 8.
Appellants rely on the Specification as amended to show that the
meaning of the generalized scalar function is clear and definite to one of
ordinary skill in the art. Br. 16. The Specification as amended on October
6, 2003, at page 8, states that “the generalized scalar function takes the row
data for the row input to the generalized scalar function and rearranges the
row data to be in a column format that the corresponding conventional
column function can use.”
Although the Examiner objected to the Specification under 37 C.F.R.
§ 1.71, the Examiner’s objections are not reviewable on appeal. The
Examiner did not object to the amended Specification under 35 U.S.C. § 132
and reject any affected claim(s) under 35 U.S.C. § 112, first paragraph. Cf.
MPEP § 2163.06, “Relationship of Written Description Requirement to New
Matter.”
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Accordingly, we consider the Specification as amended. We find that
the instant Specification provides a reasonably clear explanation in support
of the claimed “generalized scalar function,” as submitted in the
Specification amendment of October 6, 2003.

Section 112, second paragraph rejection of claims 6, 13, and 20
The Examiner finds that what was initialized, what was evaluated, and
what was finalized in claim 6 is unclear. Ans. 8. Appellants contend that
the initialization, evaluation, and finalization phases are performed in a
conventional manner and are well understood by those of ordinary skill in
the art. Br. 17.
We do not find any satisfactory response from the Examiner with
regard to what Appellants contend to be “conventional” column function
operations in claim 6. We conclude that the rejection fails to set forth an
adequate basis for concluding that the subject matter of claim 6 is indefinite.

Section 112, second paragraph -- Conclusion
Based on the foregoing consideration of representative claims 1 and 6,
we cannot sustain the rejection of claims 1-26 under 35 U.S.C. § 112, second
paragraph.

FINDINGS OF FACT
Melton
1. With reference to Figure 6, values which will be needed by the
Offset function while processing future rows are “materialized” by storing
them in auxiliary columns in the history buffer 140. While these auxiliary
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columns are shown in Figure 6 as having generic auxiliary names, in each
compiled query the columns in the table will have labels (if needed) and data
formats assigned by the query compiler. Auxiliary columns may be used to
replicate values stored in the corresponding rows, in order to make such
values accessible while processing subsequent rows. More typically,
auxiliary rows are used to store values that result from processing more than
one row of data. For example, an auxiliary column can be used to store the
running total (or the running minimum or running maximum) of a field in a
column of the table. Fig. 6; col. 8, ll. 30-44.
2. In addition to the Offset function, several running and moving
sequence functions are useful. Examples of such functions are:
RunningMin(a)--determines the minimum value of an expression “a”
for all rows in a defined range of rows; …
MovingAverage(a, window)--determines the average value of an
expression “a” for the rows in a moving window having a specified number
(window) of contiguous rows. Col. 10, ll. 15-34.

PRINCIPLES OF LAW
The allocation of burdens requires that the USPTO produce the factual
basis for its rejection of an application under 35 U.S.C. §§ 102 and 103. In
re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (citing In re Warner, 379
F.2d 1011, 1016 (CCPA 1967)). The one who bears the initial burden of
presenting a prima facie case of unpatentability is the Examiner. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“Anticipation requires the presence in a single prior art reference
disclosure of each and every element of the claimed invention, arranged as
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in the claim.” Lindemann Maschinenfabrik GmbH v. American Hoist &
Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir. 1984).

ANALYSIS -- § 102(e)
Appellants contend that “Melton fails to teach or suggest the use of
the recited generalized scalar function in conjunction with a (pre-existing,
conventional) column function.” Br. 19.
Appellants describe a column function as a function that performs an
operation on data stored in a column (see Spec. 2:11-17). Melton describes
a row function that operates on data stored in a row (see FF 1, 2).
The Examiner finds that the Offset function described by Melton is a
scalar function. However, the rejection is not clear in pointing out where
Melton might describe a “column function” as claimed.
Portions of the Answer, such as the rejection directed at dependent
claims at the bottom of page 10, suggest that the operations described in
column 10, lines 19 through 22 of Melton might be deemed to correspond to
a claimed “column function.” Although the reference describes using
columns to replicate values stored in corresponding rows, the rejection fails
to demonstrate or explain how the artisan might consider a row function as
described by Melton to be within the meaning of a “column function” as
claimed.
In any event, the rejection fails to establish that Melton discloses
performing a “column function” as recited in claim 1. The other
independent claims (8, 15, and 25) contain similar recitations concerning a
“column function,” which has not been shown in Melton.
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“[A]bsence from the reference of any claimed element negates
anticipation.” Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571
(Fed. Cir. 1986). We therefore cannot sustain the § 102(e) rejection of any
claim over Melton.

CONCLUSIONS OF LAW
(1) Appellants have not shown that the Examiner erred in
concluding that claim 1 does not recite statutory subject matter.
(2) Appellants have shown that the Examiner erred in concluding
that claims 1 and 6 are indefinite.
(3) Appellants have shown that the Examiner erred in finding that
Melton discloses a column function as recited in claim 1.

DECISION
The rejection of claims 1-26 under 35 U.S.C. § 101 as being directed
to non-statutory subject matter is affirmed.
The rejection of claims 1-26 under 35 U.S.C. § 112, second paragraph
as being indefinite for failing to particularly point out and distinctly claim
the subject matter which applicant regards as the invention is reversed.
The rejection of claims 1-26 under 35 U.S.C. § 102(e) as being
anticipated by Melton is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).

AFFIRMED
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