Ex Parte Davidson

Board of Patent Appeals and Interferences

Feb 13, 2004

08819536 (B.P.A.I. Feb. 13, 2004)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte THOMAS J. DAVIDSON
_______________
Appeal No. 2003-1895
Application No. 08/819,536
_______________
ON BRIEF
_______________
Before KRASS, FLEMING and BARRY, Administrative Patent Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection
of claims 1 and 3 through 6, all of the claims pending in the
instant application. Claim 2 has been cancelled.
Appeal No. 2003-1895
Application 08/819,536
2
Invention
The invention relates to a database system capable of
storing a variety of pieces of information without regard to the
specific structure of the information or how it is stored. See
page 1 of Appellant’s specification. As shown in Figure 1, the
storage system 10 includes a storage 12, an object catalog 14
contained in the storage 12, and a storage manager 20. The
object catalog is an object itself which is maintained in
permanent storage. See pages 7 and 8 of Appellant’s
specification. The storage 12 contains one or more collections
of object instances 01, 02, . . ., 0n, each collection being of a
type defined by a class specifier found in the object catalog 14.
See page 8 of Appellant’s specification. The operations
performed by the storage manager 20 are the basic three which are
to retrieve or remove an object instance from storage 12, or to
return an object instance to storage. In addition, collateral
activity can be associated with one or another of these
operations when requested by a particular application. See
page 10 of Appellant’s specification. Figure 3 shows the
contents of the object catalog 14. See page 11 of Appellant’s
Appeal No. 2003-1895
Application 08/819,536
3
specification. Figure 4 illustrates the handler list 26
associated with the savings class specifier and implementation
code. Analysts may associate with a particular instance class.
Also, the handler list 26 contains a list of collateral activity
associated with at least one object instant collection. See
page 12 of Appellant’s specification.
Appellant’s claim 1 is illustrative of Appellant’s
claimed invention and is reproduced as follows:
1. A database system for maintaining a store of one or
more object instance collections each of an object oriented class
type, comprising:
an object catalog containing for each class type a
class specification that includes one or more attributes and
member functions;
a database management facility for storing and
retrieving the object instances, the database management facility
operating to receive a request to retrieve an object instance
contained in a one of the object instance collections to first
search the object catalog for the corresponding class
specification; and
a list of collateral activity associated with at least
the one object instance collection, the list identifying at least
one collateral activity that is performed when the database
management facility operates to retrieve an object instance from
the one object instance collection in response to a received
request.
Appeal No. 2003-1895
Application 08/819,536
1 Appellants filed an appeal brief on September 11, 2000.
Appellants filed a reply brief on December 18, 2000. The
Examiner mailed out an office communication on January 4, 2001
stating that the reply brief has been entered.
4
References
The references relied on by the examiner are as
follows:
Smith et al. (Smith) 5,181,162 Jan. 19, 1993
Biliris et al. (Biliris) 5,590,327 Dec. 31, 1996
Rejections at Issue
Claims 1 and 3 through 6 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Smith in view of Biliris.
Throughout the opinion, we make references to the
briefs1 and the answer for the respective details thereof.
OPINION
With full consideration being given to the subject
matter on appeal, the Examiner’s rejections and the arguments of
Appellant and the Examiner, for the reasons stated infra, we
reverse the Examiner’s rejection of claims 1 and 3 through 6
under 35 U.S.C. § 103.
Appeal No. 2003-1895
Application 08/819,536
5
In rejecting claims under 35 U.S.C. § 103, the Examiner
bears the initial burden of establishing a prima facie case of
obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443,
1444 (Fed. Cir. 1992). See also In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed. Cir. 1984). The Examiner can
satisfy this burden by showing that some objective teaching in
the prior art or knowledge generally available to one of ordinary
skill in the art suggests the claimed subject matter. In re
Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
Only if this initial burden is met does the burden of coming
forward with evidence or argument shift to the Appellant.
Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. See also Piasecki,
745 F.2d at 1472, 223 USPQ at 788.
An obviousness analysis commences with a review and
consideration of all the pertinent evidence and arguments. “In
reviewing the [E]xaminer’s decision on appeal, the Board must
necessarily weigh all of the evidence and argument.” Oetiker,
977 F.2d at 1445, 24 USPQ2d at 1444. “[T]he Board must not only
assure that the requisite findings are made, based on evidence of
Appeal No. 2003-1895
Application 08/819,536
6
record, but must also explain the reasoning by which the findings
are deemed to support the agency’s conclusion.” In re Lee, 277
F.3d 1338, 1344, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002).
Appellant argues that neither Smith nor Biliris shows
that a class specification occurs in an object catalog. See
page 4 and page 6 of Appellant’s reply brief.
We note that claim 1 recites “an object catalog
containing for each class type a class specification that
includes one or more attributes and member functions.” We also
note that claim 3 recites “maintaining an object catalog that
contains a class specification for each data collection, each
class specification containing a description of each of the
number of data items of such data collection.” We finally note
that claim 6 recites “maintain[ing] an object catalog that
contains a class specification for each data collection, each
class specification containing a description of each of the
number of data items of the collection.”
The Examiner states that although Smith and Biliris do
not show that class specification occurs in an object catalog,
they must be located in order to form the use instances. See
page 3 of the Examiner’s answer.
Appeal No. 2003-1895
Application 08/819,536
7
To establish inherency, the extrinsic evidence 'must
make clear that the missing descriptive matter is necessarily
present in the thing described in the reference, and that it
would be so recognized by persons of ordinary skill.'" In re
Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir.
1999) citing Continental Can Co. v. Monsanto Co., 948 F.3d 1264,
1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991). "Inherency,
however, may not be established by probabilities or possibili-
ties. The mere fact that a certain thing may result from a given
set of circumstances is not sufficient." Id. at 1269, 20 USPQ2d
at 1749 (quoting In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323,
326 (CCPA 1981).
Upon our review of Smith and Biliris, we fail to find
any teaching that would lead a person of ordinary skill in the
art to conclude that the missing descriptive matter, an object
catalog containing for each class type a class specification that
includes one or more attributes and member functions, is
necessarily present in these references. Therefore, we fail to
find that the Examiner has met his burden of establishing a prima
facie case.
Appeal No. 2003-1895
Application 08/819,536
8
In view of the foregoing, we have not sustained the
Examiner’s rejection of claims 1 and 3 through 6 under 35 U.S.C.
§ 103.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )

MRF:psb
Appeal No. 2003-1895
Application 08/819,536
9
Bill Streeter
Hewlett-Packard Company
Intellectual Property Administration
P.O. Box 272400
Fort Collins, CO 80527-2400