Ex Parte Dettinger et al

Board of Patent Appeals and Interferences

Dec 23, 2010

10821149 (B.P.A.I. Dec. 23, 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.
10/821,149 04/08/2004 Richard D. Dettinger ROC920030369US1 9495
46797 7590 12/23/2010
IBM CORPORATION, INTELLECTUAL PROPERTY LAW
DEPT 917, BLDG. 006-1
3605 HIGHWAY 52 NORTH
ROCHESTER, MN 55901-7829
EXAMINER
BETIT, JACOB F
ART UNIT PAPER NUMBER
2169
MAIL DATE DELIVERY MODE
12/23/2010 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, DAN P. KOLZ,
RICHARD J. STEVENS, and SHANNON E. WENZEL
____________________

Appeal 2009-005674
Application 10/821,149
Technology Center 2100
____________________

Before JOSEPH L. DIXON, JAY P. LUCAS, and DEBRA K. STEPHENS,
Administrative Patent Judges.

STEPHENS, 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.

Appeal 2009-005674
Application 10/821,149

2
Appellants appeal under 35 U.S.C. § 134(a) (2002) from a final
rejection of claims 1-7, 12-16, and 22-26. Claims 8-11 and 17-21 have been
canceled (App. Br. 5). We have jurisdiction under 35 U.S.C. § 6(b) (2010).
We REVERSE.

Introduction
According to Appellants, the invention is a system and method for
“managing parameterized queries and making them available to users based
on associations between parameterized queries and fields referenced by the
results set” (Spec. 4, [0011]).

STATEMENT OF CASE
Exemplary Claim(s)
Claim 1 is an exemplary claim and is reproduced below:
1. A search system for gathering detailed information
about objects of interest, comprising:

an interface for presenting, to a user, a results set
received in response to issuing an original executable query,
wherein the results set contains a field with one or more values
representing objects of interest;

a set of parameterized queries, each having one or more
conditions containing at least one parameter marker for which a
value may be substituted to generate an executable query;

a set of parameterized query associations, each
specifying one or more fields involved in conditions having
parameter markers contained in a corresponding parameterized
query in the set of parameterized queries; and

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an executable component configured to identify one or
more of the parameterized queries only if each field, specified
as required in one or more parameterized query associations
corresponding to the identified parameterized queries, are
contained in the result set.

Prior Art
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Yuknewicz US 2005/0171934 A1 Aug. 4, 2005
(filed Jan. 30, 2004)

REJECTIONS
Claims 1-7, 12-16, and 22-26 stand rejected under 35 U.S.C. § 102(e)
as being anticipated by Yuknewicz (Ans. 3-9).

GROUPING OF CLAIMS

Appellants argue all the independent claims, claims 1, 7, 12, 16, and
22, collectively as a group on the basis of arguments set forth for claim 1
(App. Br. 12-14, Reply Br. 2-6). None of the dependent claims were argued
separately. The Examiner addresses independent claims 1 and 22 as a group
and independent claims 7, 12, and 16 as a group finding that although
Appellants argue the claims collectively on the basis of claim 1, the claims
though similar, are not so commensurately recited that a separate discussion
is not required. We will consider the rejections as grouped by the Examiner.
We will, therefore, treat claims 2-6 and 22-26 as standing or falling with
representative claim 1 and claims 12-16 as standing or falling with claim 12.
See 37 C.F.R. § 41.37(c)(1)(vii).
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ISSUE 1
35 U.S.C. § 102(e): claims 1-6 and 22-26
Appellants argue their invention is not anticipated by Yuknewicz
because Yuknewicz does not disclose identifying one or more of the
parameterized queries only if each field, specified as required in one or more
parameterized query associations corresponding to the identified
parameterized queries, are contained in the result set (App. Br. 13).
Specifically, Appellants argue the Examiner’s mapping is flawed as the
Examiner is using single elements of Yuknewicz to represent multiple claim
elements (App. Br. 13 and Reply Br. 3-5).
In response, the Examiner maintains that as the claim components are
not required to be in any particular order, the result set is the result of the
original executable query which is a parameterized query that has been
executed (Ans. 11). The Examiner finds that the user is presented with an
interface after the parameterized query has been executed (id.). The
Examiner then finds that the query selected by the user to be executed (Ans.
11 and 12). The results must contain the field and value specified in the
query (Ans. 12).

Issue 1: Has the Examiner erred in finding Yuknewicz discloses the
invention as recited in claim 1?

FINDINGS OF FACT (FF)
Yuknewicz
(1) The system and method relate to the field of generating a
parameterized query to retrieve selected data from a data source.
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A user may select a dataset and choose whether to select an
existing parameterized query or to define a new parameterized query
to execute upon the selected dataset. If the user chooses to select an
existing parameterized query, then a set of existing parameterized
queries corresponding to the dataset may be identified and displayed
to the user. If the user chooses to define a new parameterized query,
then the new parameterized query may easily be merged into the set of
existing parameterized queries corresponding to the dataset. In
response to the generation of a parameterized query, input fields may
be readily provided that enable the user to set the value of query
parameters.

(Abstract and pg. 1, [0002] Field of the Invention).

(2) A user is presented with an interface that allows the selection of
the parameterized query task. Once the user selects the parameterized query
task, a parameterized query dialog box 500 which includes a select dataset
drop down menu 510, is presented to the user for selection of a dataset in
which the parameterized query is to be executed. (Pg. 4, [0048] and Fig. 5).
(3) The dialog box 500 may also, for example, include radio
buttons 522 and 532, which enable the user to choose whether to define a
new parameterized query or to select an existing parameterized query
corresponding to the database the user has selected (Customers dataset
222a). If the user picks an existing parameterized query by pressing existing
query radio button 532, an existing parameterized query drop down menu
530 is activated. The user may then select an existing query to use on the
selected dataset. (Pg. 4, [0049] and Figs. 4 and 5).
(4) The dialog box 500 also includes parameterized query input
field 550. When the existing query radio button is selected and an existing
query is selected from the set, the input field is provided for the user to set a
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parameter. A parameterized query may have any number of parameters and
may include a constant that does not change. For example, the code may
read "Zip Code=00001" rather than "Zip Code=@Zip Code." (Pg. 4 and 5,
[0052] and Fig. 5).
(5) Below input field 550, the dialog box 500 displays a sample
query associated with the selected table to assist the user in interpreting the
query code displayed in input field 550. (Pg. 5, [0053] and Fig. 5).
(6) If the user chooses to generate the query, by clicking on the
“OK” button 560, a form 312 may be re-activated. The form 312 includes
user input fields for the user to set the parameters of the parameterized query
generated using dialog box 500. The form 312 includes a parameter input
field 610, which in the example, corresponds to the zip code parameter of
the selected "Fill by Zip Code" query. (Pg. 5, [0054] and [0055] and Figs. 5
and 6).
(7) Once the user enters the desired data in the parameter input
field, the user may load the parameterized query with the information.
When the parameterized query is loaded, the form 312 is populated with the
selected portion of the data set (customers dataset 222a). (Pg. 5, [0056] and
Figs. 6 and 7).

ANALYSIS
Anticipation is established only when a single prior art reference
discloses, expressly or under the principles of inherency, each and every
element of a claimed invention as well as disclosing structure which is
capable of performing the recited functional limitations. RCA Corp. v. App.

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Dig. Data Sys., Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984); W.L. Gore and
Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1554 (Fed. Cir. 1983).

The Examiner bears the initial burden, on review of the prior art or on
any other ground, of presenting a prima facie case of unpatentability (In re
Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). If that burden is met, the
burden of coming forward with evidence or argument shifts to the applicant
(id.).
We find the Examiner has not made a sufficient showing. The
Examiner’s arguments that the components are not required by the claim
language to be organized in any particular order is unpersuasive (See Ans.
10-11). The claim clearly recites a functional relationship between the
elements which requires a certain flow of results from one element to
another (FF 2-6 and Figs. 5 and 6). Further, we agree with Appellants that it
appears the Examiner is relying on the query which is selected (FF 2) to
represent both the original executable query and the set of parameterized
queries (See Ans. 3 and 4). As a result, we are left to speculate how the
Examiner has shown Yuknewicz discloses or describes each of the recited
elements. We decline to do so.
Therefore, since the Examiner has not shown that Yuknewicz
discloses the invention as recited in claim 1 and commensurately recited in
claim 22, and the Examiner did not remedy the noted deficiency in the
showing with respect to claims 2-6 and 23-26, we find the Examiner has
erred in rejecting claims 1-6 and 22-26 for anticipation over Yuknewicz.

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ISSUE 2
35 U.S.C. § 102(e): claims 7 and 12-16
Appellants argue their invention is not anticipated by Yuknewicz
because Yuknewicz does not disclose analyzing a results set presented to
identify parameterized queries associated with fields contained therein (App.
Br. 13). Appellants further argue that in Yuknewicz, a parameterized query
result set is returned to the user and therefore must include the field being
searched; however, the value being searched is not using the output of a
query to identify the query itself (Reply 5).
In response, the Examiner maintains Yuknewicz describes that the
user may select a dataset in which the parameterized query is to be executed
(Ans. 10). The Examiner thus finds the selection of a dataset is the results
set (id.). The Examiner then finds once the dataset is selected, different
queries will be presented to the user (Ans. 10 and 11). Therefore, according
to the Examiner, since the queries listed may be determined by searching a
schema metafile, Yuknewicz discloses the invention as recited (Ans. 11).

Issue 2: Has the Examiner erred in finding Yuknewicz discloses the
invention as recited in claim 12?

FINDINGS OF FACT (FF)
Yuknewicz
(8) “The queries listed in drop down menu 520 may be determined by
searching a schema metadata file. Such a schema metadata file may be, for
example, an extensible markup language (XML) file that stores associated
queries and schema information.” (Pg. 4, [0049]).
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ANALYSIS
We find that the Examiner has not made a sufficient showing that
Yukenwicz discloses “analyzing a results set presented to identify
parameterized queries associated with fields contained therein” as recited in
claim 12 or “identifying one or more parameterized queries, each associated
with one or more of the plurality of fields in the results set” as recited in
claim 16 and commensurately recited in claim 7. According to our
understanding, the Examiner states the selection of a dataset is the “results
set” (Ans. 10). However, Appellants recite that the results set comprises a
plurality of fields which are used in identifying the parameterized queries
(claims 7 and 16). In contrast, Yukenwicz describes that once a query is
selected, then the associated fields appear on the user interface (FF 3 and 4).
The Examiner has not shown that Yukenwicz discloses that the fields are
used in identifying the parameterized queries. Therefore, the Examiner has
not shown Yukenwicz discloses the invention as recited in claims 7 and 16.
Similarly, claim 12 recites that the results set presented is analyzed to
identify parameterized queries associated with fields contained in the
parameterized queries. The Examiner has not shown that Yukenwicz
analyzes the customer dataset to identify the parameterized queries that are
associated with fields. Instead, we find Yukenwicz analyzes the customer
database and provides a user the ability to choose either an existing query or
create a new query (FF 3 and 8). The parameterized queries are not
identified in association with fields. Therefore, the Examiner has not shown
Yukenwicz discloses the invention as recited in claim 12.
The Examiner did not remedy the noted deficiency in the showing
with respect to dependent claims 13-15. Accordingly, the Examiner has not
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made a sufficient showing that Yukenwicz anticipates the invention as
recited in claims 7 and 12-16.
DECISION
The Examiner’s rejection of claims 1-7, 12-16, and 22-26 under
35 U.S.C. § 102(e) as being anticipated by Yuknewicz is reversed.

REVERSED

rwk

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