Ex Parte Dettinger et al

Board of Patent Appeals and Interferences

Feb 6, 2012

10460589 (B.P.A.I. Feb. 6, 2012)

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.
10/460,589 06/12/2003 Richard D. Dettinger ROC920030165US1 5768
7590 02/06/2012
William J. McGinnis, Jr.
IBM Corporation, Dept. 917
3605 Highway 52 North
Rochester, MN 55901-7829
EXAMINER
AHLUWALIA, NAVNEET K
ART UNIT PAPER NUMBER
2166
MAIL DATE DELIVERY MODE
02/06/2012 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, FREDERICK A. KULACK,
RICHARD J. STEVENS, and ERIC W. WILL
____________

Appeal 2011-013639
Application 10/460,589
Technology Center 2100
____________

Before JOSEPH L. DIXON, HOWARD B. BLANKENSHIP, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-013639
Application 10/460,589

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STATEMENT OF THE CASE
A Patent Examiner rejected claims 1-5, 7-10, 12-13, 15-17, 20, and
21. The Appellants appeal therefrom under 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6(b). This appeal is related to prior appeal
2009-005306, decided February 12, 2010.
We reverse and enter new grounds of rejection under 37 CFR § 41.50
(b).

A. INVENTION
The invention at issue on appeal relates to data processing and more
particularly to focusing the number of data model fields and values
presented to a user during a query building process to those related to one or
more specified concepts. (Spec. 1).

B. ILLUSTRATIVE CLAIM
Claim 1, which further illustrates the invention, follows.
1. A computer-implemented method of providing access
to data stored in a plurality of physical fields of a data
repository, comprising:
providing a base data abstraction component comprising
logical fields mapped to corresponding physical fields of the
data repository;
receiving a list of one or more concepts specified by a
user via a user interface;
wherein the user interface allows the user to build a
database query, for retrieving data stored in the corresponding
physical fields, based on a plurality of the logical fields
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presented to the user, wherein the database query and the user
interface are agnostic to the corresponding physical fields;
accessing a relationships repository containing
relationships between concepts in order to identify any
additional concepts related to the one or more concepts in the
list;
generating a supplemental list by adding any additional
concepts identified from the relationships repository to the list;
and
responsive to generating the supplemental list, limiting
the logical fields presented to the user in the user interface to
those related concepts in the supplemental list, wherein limiting
the logical fields comprises examining an attribute of each of
the logical fields indicative of one or more concepts to which
the respective logical field relates.

C. REFERENCES
The Examiner relies on the following references as evidence:
Goiffon US 6,327,593 B1 Dec. 4, 2001
Blakeley US 5,761,493 Jun. 2, 1998

D. REJECTIONS
Claims 1-5, 7-10, 12, 13, 15-17, 20 and 21 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Goiffon in view of Blakeley.

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PRINCIPLES OF LAW
Section 112, Second Paragraph
The legal standard for definiteness is whether a claim reasonably
apprises those of skill in the art of its scope. In re Warmerdam, 33 F.3d
1354, 1361 (Fed. Cir. 1994). The inquiry is merely to determine whether the
claims do, in fact, set out and circumscribe a particular area with a
reasonable degree of precision and particularity. In re Moore, 439 F.2d
1232, 1235 (CCPA 1971).

ANALYSIS
Considering now the rejections of claims 1-5, 7-10, 12-13 , 15-17, 20,
and 21 under 35 U.S.C. § 103, we have carefully considered the subject
matter defined by these claims. However, for reasons stated supra in our
new rejection under the first and second paragraph of Section 112 entered
under the provisions of 37 CFR 41.50(b), no reasonably definite meaning
can be ascribed to certain language appearing in the claims. As the court in
In re Wilson, 424 F.2d 1382 (CCPA 1970) stated:
[a]ll words in a claim must be considered in judging the
patentability of that claim against the prior art. If no reasonably
definite meaning can be ascribed to certain terms in the claim,
the subject matter does not become obvious -- the claim
becomes indefinite.

In comparing the claimed subject matter with the applied prior art, it is
apparent to us that considerable speculations and assumptions are necessary
in order to determine what in fact is being claimed. Since a rejection based
on prior art cannot be based on speculations and assumptions, see In re
Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962), we are
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constrained to reverse, pro forma, the examiner's rejections of claims
through under 35 U.S.C. § 103. We hasten to add that this is a procedural
reversal rather than one based upon the merits of the Section 103 rejections.

Section 112, First and Second Paragraphs
Claims 1-5, 7-10, 12, 13, 15-17, 20, and 21 are rejected under 35
U.S.C. § 112, second paragraph, as failing to particularly point out and
distinctly claim the invention.
Claims 1-5, 7-10, 12, 13, 15-17, 20, and 21 are rejected under 35
U.S.C. § 112, first paragraph, as failing to provide adequate written
description of the claimed invention and failing to provide an enabling
description of the claimed invention.
Appellants amended independent claims 1, 7, 12, and 17 on July 27,
2010, to recite "wherein the database query and the user interface are
agnostic to the corresponding physical fields" (Emphasis added). In this
amendment, we find no indication of written description support for the
"database query and the user interface are agnostic to the corresponding
physical fields." Furthermore, Appellants have identified no recognized
(definite) meaning f the term "agnostic" in the data processing arts, at the
time of Appellants’ invention, to support Appellants’ contentions in the
Appeal Brief. Additionally, Appellants’ proffered support in the Summary
of the Claimed Subject Matter identifies page 7, lines 12-18 to support the
claimed limitation. Our review of this portion of the originally filed
Specification along with the additional portions identified for independent
claims 7, 12, and 17 does not identify written description support, enabling
description and does not assist in particularly pointing out and distinctly
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claiming the invention. (App. Br. 7-10). Therefore, speculations and
assumptions are necessary in order to determine what in fact is being
claimed and what the proper scope of the claimed language "the database
query and the user interface are agnostic to the corresponding physical
fields." (Emphasis added).

CONCLUSION
For the aforementioned reasons, we pro forma reverse the
obviousness rejections of claims 1-5, 7-10, 12, 13, 15-17, 20, and 21 and
enter new grounds of rejection of claims 1-5, 7-10, 12, 13, 15-17, 20, and 21
under 35 U.S.C. §§ 112, first and second paragraphs.
This decision contains a new ground of rejection 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 Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal 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
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 § 41.52 by the Board upon the same record. . . .

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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).

REVERSED-37 C.F.R. § 41.50(b)

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