Ex Parte Dettinger et al

Board of Patent Appeals and Interferences

Sep 24, 2010

10965183 (B.P.A.I. Sep. 24, 2010)

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.
10/965,183 10/14/2004 Richard D. Dettinger ROC920040087US1 5342
46797 7590 09/27/2010
IBM CORPORATION, INTELLECTUAL PROPERTY LAW
DEPT 917, BLDG. 006-1
3605 HIGHWAY 52 NORTH
ROCHESTER, MN 55901-7829
EXAMINER
RAHMAN, MOHAMMAD N
ART UNIT PAPER NUMBER
2161
MAIL DATE DELIVERY MODE
09/27/2010 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte RICHARD D. DETTINGER, DANIEL P. KOLZ,
RICHARD J. STEVENS, and JEFFREY W. TENNER
________________

Appeal 2009-006998
Application 10/965,183
Technology Center 2100
________________

Before JAMES D. THOMAS, HOWARD B. BLANKENSHIP, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Application 10/965,183

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 through 20. We have jurisdiction under 35 U.S.C. §
6(b).
We reverse and institute a new ground of rejection within the
provisions of 37 C.F.R. § 41.50(b).

Invention
One embodiment of the present invention provides a data
processing system for retrieving data. The data processing
system generally includes an abstract model comprising a
plurality of definitions of logical fields, each definition
comprising a logical field name and a mapping referencing
physical data, wherein at least one logical field comprises at
least a first mapping referencing data in a first physical data
structure, a second mapping referencing data in a second
physical data structure, and a first conditional modifier allowing
the logical field to be selectably mapped to the first physical
data structure using the first mapping or the second physical
data structure using the second mapping, depending on the
presence of the first conditional modifier in an abstract query
containing the at least one logical field. The data processing
system also includes a query processor configured to convert
one or more abstract queries containing logical fields
configured with conditional modifiers into one or more
executable queries of a given query language by referencing the
abstract model.
(Spec. [0012]; Figs. 1-3.)

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Representative Claim
1. A data processing system for retrieving data comprising:
an abstract model comprising a plurality of definitions of logical fields, each
definition comprising a logical field name and a mapping referencing
physical data, wherein at least one logical field comprises:
at least a first mapping referencing data in a first physical data
structure;
a second mapping referencing data in a second physical data structure;
and
a first conditional modifier allowing the logical field to be selectably
mapped to the first physical data structure using the first mapping or the
second physical data structure using the second mapping, depending on the
presence of the first conditional modifier in an abstract query containing the
at least one logical field; and
a query processor configured to convert one or more abstract queries
containing logical fields configured with conditional modifiers into one or
more executable queries of a given query language by referencing the
abstract model.

Prior Art and Examiner’s Rejections
The Examiner relies on the following reference as evidence of
anticipation:

Dettinger 2003/0167274 A1 Sept. 4, 2003

All claims on appeal, claims 1 through 20, stand rejected under 35
U.S.C. §102(b) as being anticipated by Dettinger. Certain claims are also
provisionally rejected under the doctrine of obviousness-type double
patenting.
ANALYSIS
We vacate the prior art rejections encompassing all claims on appeal
because we conclude that all claims on appeal, claims 1 through 20, are
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“barred at the threshold by § 101.” In re Comiskey, 554 F.3d 967, 973 (Fed.
Cir. 2009) (citing Diamond v. Diehr, 450 U.S. 175, 188 (1981)). Therefore,
the following new ground of rejection is set forth in this Opinion within the
provisions of 37 C.F.R. § 41.50(b).

NEW REJECTION UNDER 35 U.S.C. § 101
PRINCIPLES OF LAW
Statutory Subject Matter
The subject matter of claims permitted within 35 U.S.C. § 101 must
be a machine, a manufacture, a process, or a composition of matter.
Moreover, our reviewing court has stated that “[t]he 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.” In re Nuijten, 500 F.3d 1346, 1354
(Fed. Cir. 2007); accord In re Ferguson, 558 F.3d 1359 (Fed. Cir. 2009).
This latter case held that claims directed to a “paradigm” are nonstatutory
under 35 U.S.C. § 101 as representing an abstract idea. Thus, a “signal”
cannot be patentable subject matter because it is not within any of the four
categories. In re Nuijten, 500 F.3d at 1357. Laws of nature, abstract ideas,
and natural phenomena are excluded from patent protection. Diamond v.
Diehr, 450 U.S. at 185. A claim that recites no more than software, logic or
a data structure (i.e., an abstraction) does not fall within any statutory
category. In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994).

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Significantly, “[a]bstract software code is an idea without physical
embodiment.” Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007).
The unpatentability of abstract ideas was reaffirmed by the U.S. Supreme
Court in Bilski v. Kappos, 130 S.Ct. 3218 (2010).
With this background in mind, all claims on appeal, claims 1 through
20, are rejected under 35 U.S.C. §101 as being directed to non-statutory
subject matter.
Consistent with our earlier-noted invention statement taken from
Appellants’ Summary of the Invention in this application, the disclosed and
claimed invention is directed to software per se, abstract ideas, abstract
concepts and methodologies and the like, including various data structures
and named entities, such as various labeled modules and processes and
various abstract, logical relationships and functionalities associated there
with, an abstract model, software components/applications, and abstract
intellectual processes associated with them within the claims on appeal.
The independent claims on appeal reflect the noted summary of the
invention as well as the showings in figures 1 through 3. These views are
buttressed by the following paragraphs from appellant's specification as
filed:

[0030] In one embodiment of a data abstraction model, users
may compose an abstract query using a set of logical fields
defined by a data abstraction layer. The data abstraction layer,
along with an abstract query interface, provide users with an
abstract view of the data available to query (e.g., search, select,
and modify). The data itself is stored in a set of underlying
physical databases using a concrete physical representation
(e.g., a relational database). The physical representation may
include a single computer system, or may comprise many such
systems accessible over computer networks. The data
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abstraction layer provides a logical view of one or more such
underlying data repositories that is independent of the
particular manner of data representation. Where multiple data
sources are provided, each logical field may be is [sic]
configured to include a location specification identifying the
location of the data to be accessed. A runtime component is
configured to resolve an abstract query into a form that can be
issued against the underlying physical data repositories.

[0032] In general, the routines executed to implement the
embodiments of the invention, may be part of an operating
system or a specific application, component, program, module,
object, or sequence of instructions. The software of the present
invention typically is comprised of a plurality of instructions
capable of being performed using a computer system. Also,
programs typically also include variables and data structures
that reside in memory or on storage devices as part of their
operation. In addition, various programs described hereinafter
may be identified based upon the application for which they are
implemented in a specific embodiment of the invention. Those
skilled in the art will recognize, however, that any particular
nomenclature that follows is used merely for convenience, and
thus does not limit the invention for use solely in any specific
application identified or implied by such nomenclature.
Furthermore, the functionality of programs described here in
[sic] uses discrete modules or components interacting with one
another. Those skilled in the art will recognize that different
embodiments may combine or merge the components and
modules described herein in many different ways.

The substance of the independent claims in this appeal are also
reflective of the illustrations to the left of the vertical dashed line in figure 1
to include the labeled block diagrams of an abstract query 130, logical fields
131, conditional modifier 132, change enabler 140, data abstraction model
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150, and query execution component 160, all of which are labeled
collectively to comprise a logical/abstract representation. This figure is
discussed beginning in Specification paragraph [0033], and paragraph
[0036] indicates that change enabler 140 is implemented as a program
module. Paragraph [0037] indicates that Figure 2 illustrates one
embodiment of a component of the data abstraction model 150, where this
component depicts an abstract query and a data repository abstraction by the
use of various labeled, data entities comprising some of the claimed logical
fields and mapping references. An actual abstract query example is shown
beginning at Specification page 11 and an actual data repository abstraction
example is shown at page 12 of the Specification. Figure 3 illustrates a
method in flowchart form of a runtime method 300 that is an example of the
operation of the query execution component 160 in Figure 1.
System independent claims 1, 7 and 19 contain a nominal recitation of
a data processing system in their preambles. Based upon the nature of the
recited material in the body of these claims, which recite an abstract model
and a query processor, no hardware or structure is to be imputed to the mere
recitation of a data processing system. In view of the foregoing, it is clear
that this feature is directed to a software-based data processing system per
se. The claimed query processor is reflective of the functionality associated
with the query execution software component 160 in figure 1, in turn as
reflected in flowchart form in figure 3. There is no recited hardware or
structural element performing any functionality in the body of these system
claims.
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In like manner, the recitation of a computer implemented method in
the method independent claims 12, 14, and 17 does not by itself impart any
structural or hardware component to the recitations in the body of these
claims that recite various functionalities or steps. In other words, no
computer is recited in the body of these claims to perform the recited
functions or steps. Of particular interest is the recitation in the preamble of
independent claim 17 that the method is merely recited to be "in" a computer
system. This approach appears to directly claim a software-based system as
well.

CONCLUSION AND DECISION
We have pro forma vacated the outstanding rejection over applied
prior art of all claims on appeal, claims 1-20. We have instituted a new
ground of rejection within 37 C.F.R. § 41.50(b). This new rejection of all
claims on appeal is based upon 35 U.S.C. § 101 since these claims are
directed to non-statutory subject matter.
A new ground of rejection is pursuant to 37 C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides that: “[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new grounds of
rejection to avoid termination of proceedings (37 C.F.R. § 1.197(b)) as to the
rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
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reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner . . . .
(2) Request rehearing. Request that the proceeding be
reheard under 37 C.F.R. § 41.52 by the Board upon the same
record . . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

VACATED; 37 C.F.R. § 41.50(b)

Erc

IBM CORPORATION, INTELLECTUAL PROPERTY LAW
DEPT 917, BLDG. 006-1
3605 HIGHWAY 52 NORTH
ROCHESTER, MN 55901-7829