Ex Parte Devanathan et al

Board of Patent Appeals and Interferences

Jan 20, 2011

10716286 (B.P.A.I. Jan. 20, 2011)

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.
10/716,286 11/18/2003 Sriram Devanathan 592-L 6071
34225 7590 01/21/2011
UNISYS CORPORATION
Office of the General Counsel
801 Lakeview Drive, Suite 100
MailStop: 2NW
Blue Bell, PA 19422
EXAMINER
SYED, FARHAN M
ART UNIT PAPER NUMBER
2165
MAIL DATE DELIVERY MODE
01/21/2011 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 SRIRAM DEVANATHAN, JEFFREY ALLEN MOORE, JOSEPH
PETER STEFANIAK, and LONNIE DALE SULGROVE
____________
Appeal 2009-006545
Application 10/716,2861
Technology Center 2100
____________

Before JOSPEH L. DIXON, JEAN R. HOMERE, and JAMES R. HUGHES,
Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL2

1 Filed on November 18, 2003. The real party in interest is Unisys Corp.
(Br. 3.)
2 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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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) (2002) from the
Examiner’s final rejection of claims 1 through 38. (Br. 3.) We have
jurisdiction under 35 U.S.C. § 6(b) (2008).
We affirm-in-part.
Appellants’ Invention
Appellants invented a method, machine-accessible storage medium,
and system for designing a database by converting logical aspects of
common warehouse model (hereinafter “CWM”) representations to
corresponding elements in a relational database. (Spec. 1, ll. 15-19.)
Illustrative Claim
Independent claim 1 further illustrates the invention as follows:
1. A method comprising:

converting logical aspects of a common warehouse model
(CWM) to corresponding design items for a relational database by
processing in a hierarchical manner the logical aspects and creating
the corresponding design items, the logical aspects comprising entity-
relationship (ER) libraries, the ER libraries comprising ER models,
the corresponding design items comprising design libraries, the design
libraries comprising design models.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Toby J. Teorey et al., A Logical Design Methodology for Relational
Databases Using the Extended Entity—Relationship Model: Computing
Surveys (June 1986) (M.S. thesis, University of Michigan) (on file with
Computer and Information Systems, Graduate School of Business
Administration) (hereinafter “Teorey”).

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Kumpon Farpinyo & Twittie Senivongse, Designing and Creating
Relational Schemas with a CWM-Based Tool (2002) (on file with the
Department of Computer Engineering, Chulalongkorn University)
(hereinafter “Farpinyo”).

Rejections on Appeal3
The Examiner rejects the claims on appeal as follows:
Claims 15 and 27 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
Claims 1, 13, 15, and 27 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Teorey.
Claims 1, 13, 15, and 27 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Farpinyo.
Claims 2 through 12, 14, 16 through 26, and 28 through 38 stand
rejected under § 103(a) as being unpatentable over the combination of
Teorey and Farpinyo.
Appellants’ Contentions
1. Appellants contend that independent claim 15 is directed to
statutory subject matter because it is limited to a machine-accessible storage
medium. (Br. 10-11) (emphasis added.) Appellants also argue that the
Examiner improperly rejected independent claim 15 under 35 U.S.C. § 101
because the Examiner fails to respond to the substance of Appellants’
amendment. (Id. at 11.)
2. Appellants contend that independent claim 27 clearly recites a
processor, a memory coupled to the processor, and memory containing

3 The Examiner withdrew the rejection of claims 1, 13, 15, and 27 under 35
U.S.C. § 102(e) as being anticipated by Shinjo. (Ans. 3.) The Examiner
appears to have mistakenly repeated the text of this rejection in the Answer.
(Ans. 8-9.)
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program code. (Id. at 11-12.) Therefore, Appellants argue that independent
claim 27 is directed to statutory subject matter because they fail to see how
the Examiner could construe the claim as a transmission medium, or a
transitory data signal. (Id. at 12.) Appellants also allege that the Examiner
improperly rejected independent claim 27 under 35 U.S.C. § 101 because the
Examiner fails to respond to the substance of the arguments previously
presented by Appellants. (Id.)
3. Appellants generally contend that the disclosure in Teorey’s
Abstract fails to teach at least one of the elements of independent claim 1.
(Br. 13-14.) Appellants also argue that Teorey cannot anticipate
independent claim 1 because CWM was introduced ten years before
Teorey’s publishing date of 1986. (Id.)
4. Appellants contend that since Farpinyo’s ER2CWM tool cannot
display ER diagrams created from any CWM document, Farpinyo does not
teach using the logical information part of CWM. (Id. at 15-16.) Appellants
also argue that Farpinyo cannot anticipate independent claim 1 because
Farpinyo only discloses CWM Relational, or the physical aspects of CWM,
not the logical aspects of CWM. (Id. at 17.) Therefore, Appellants allege
that Farpinyo does not inherently or explicitly disclose any of the elements
recited in independent claim 1. (Id.)
Moreover, Appellants generally contend that both Farpinyo’s Abstract
and Introduction sections do not teach any of the elements recited in
independent claim 1. (Id. at 18.) Further, Appellants allege that the
Examiner failed to respond to the arguments previously presented by
Appellants and, therefore, the Examiner’s lack of response amounts to an
improper Final Rejection. (Id. at 18-19.)
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Examiner’s Findings and Conclusions
1. The Examiner finds that independent claim 15 is directed to
non-statutory subject matter because Appellants’ Specification indicates that
the claimed “machine-accessible storage medium” encompasses a transitory,
computer data signal. (Ans. 4-5.) 4 The Examiner also finds that
Appellants’ Specification should be objected to as failing to provide proper
antecedent basis for the claimed “a machine-accessible storage medium.”
(Id. at 24) (emphasis added.)
2. The Examiner finds that independent claim 27 is directed to
non-statutory subject matter because Appellants’ Specification indicates that
the claimed “program code” encompasses a transitory, computer data signal.
(Id. at 5-6.) The Examiner also maintains that Appellants’ arguments
pertaining to the 35 U.S.C. § 101 rejection of independent claim 27 were
addressed in the Final Rejection entered January 11, 2007. (Id. at 24.)
3. The Examiner finds that Teorey’s disclosure of accomplishing
relational database design with a variety of approaches, including top-down,
bottom-up, and combined methodologies, encompasses the CWM. (Id. at
25.) The Examiner also finds that the Microsoft Computer Dictionary, 5th
Ed., defines the CWM as an instance of a data warehouse model. (Id.)
Further, the examiner finds that Appellant’s Specification states that CWM
stems from Unified Modeling Language, which is object-orienting
programming. (Id.) Therefore, the Examiner finds that Teorey’s disclosure
can be broadly, but reasonably construed to teach independent claim 1. (Id.)

4 All references to the Examiner Answer are to the Miscellaneous
Communication/Supplemental Answer filed on June 16, 2008, which
replaced the prior Answer filed on November 27, 2007.

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Moreover, the Examiner finds that Teorey’s disclosure of entities, attributes,
and relationships, in conjunction with ER Modeling and Extended
Constructs for a relational model, teaches independent claim 1. (Id. at 25-
26.) The Examiner also finds that the disclosure in Teorey’s Abstract
teaches the disputed claim. (Id. at 26.)
4. The Examiner finds that both Farpinyo’s Abstract and
Introduction sections, which includes utilizing a tool to design a database
with ER diagrams and creating database schemas, teaches independent claim
1. (Id. at 26-28.)

II. ISSUES
1. Have Appellants shown that the Examiner erred in finding that
independent claim 15 is directed to non-statutory subject matter? In
particular, the issue turns on whether the claimed “machine-accessible
storage medium” can be properly construed as a manufacture.
2. Have Appellants shown that the Examiner erred in finding that
independent claim 27 is directed to non-statutory subject matter? In
particular, the issue turns on whether the claimed “system” and
corresponding “processor” and “memory” can be properly construed as a
machine.
3. Have Appellants shown that the Examiner erred in finding that
Teorey anticipates independent claim 1? In particular, the issue turns on
whether Appellants have persuasively rebutted the Examiner’s rejection.
4. Have Appellants shown that the Examiner erred in finding that
Farpinyo anticipates independent claim 1? In particular, the issue turns on
whether Farpinyo teaches “converting logical aspects of a common
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warehouse model (CWM) to corresponding design items for a relational
database by processing in a hierarchical manner the logical aspects and
creating the corresponding design items, the logical aspects comprising
entity-relationship (ER) libraries, the ER libraries comprising ER models,
the corresponding design items comprising design libraries, the design
libraries comprising design models,” as recited in independent claim 1.

III. FINDINGS OF FACT
The following Findings of Fact (hereinafter “FF”) are shown by a
preponderance of the evidence.
Appellants’ Specification
FF 1. Appellants’ Specification states the following:
[t]he program or code segments can be stored in a processor or
machine accessible medium or transmitted by a computer data signal
embodied in a carrier wave, or a signal modulated by a carrier, over a
transmission medium.

(Spec. 10, ll. 20-32.)
Farpinyo
FF 2. Farpinyo discloses a CWM-based tool, called ER2CWM, that
creates CWM relational database schemas from physical data models
represented by ER diagrams. (Abst.) In particular, Farpinyo discloses that
the tool supports the creation of ER diagrams, the transformation of ER
diagrams to CWM format, and the creation of database schemas for
relational database management systems (hereinafter “DBMS”). (Id.)

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IV. ANALYSIS
35 U.S.C. § 101 Rejection
Claim 15
Independent claim 15 recites, in relevant part, “[a]n article of
manufacture comprising: a machine-accessible storage medium . . .”.
(Emphasis added.)
As detailed in the Findings of Fact above, Appellants' Specification
indicates that both a processor and a machine-accessible medium are capable
of storing program or code segments. (FF 1.) Appellants’ Specification also
indicates that a computer data signal embodied in a carrier wave, or a signal
modulated by a carrier wave over a transmission medium, is capable of
transmitting such program or code segments. (Id.) We find that the claimed
“machine-accessible storage medium” is limited to the specific embodiment
wherein a storage medium is capable of storing program or code segments,
which is separate and distinct from the carrier wave embodiment. Therefore,
we do not agree with the Examiner that the claimed “machine-accessible
storage medium” encompasses the carrier wave embodiment. We are
satisfied that the recited limitation is directed to a non-transitory and tangible
medium, which constitutes a manufacture. 5 Accordingly, we find that
independent claim 15 is directed to one of the four statutory classes of
subject matter under 35 U.S.C. § 101. It follows that Appellants have shown

5 A storage medium constitutes the statutory class of a manufacture since it
is a product of “articles for use from raw or prepared materials by giving to
these materials new forms, qualities, properties, or combinations, whether by
hand-labor or by machinery.” See In re Nuijten, 500 F.3d 1346, 1356 (Fed.
Cir. 2007) (citations and internal quotation marks omitted).

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that the Examiner erred in finding that independent claim 15 is directed to
non-statutory subject matter.
Claim 27
Independent claim 27 recites, in relevant part, “[a] system comprising:
a processor; and . . . memory containing program code that, when executed
by the processor, causes the processor to perform the operation of[] . . .”.
We find that the claimed “system” entails the use of “a processor” and
“memory” programmed or configured to perform the operation recited in
independent claim 27. Therefore, we find that the claimed “system” is a
machine,6 which is one of the four statutory classes of subject matter under
35 U.S.C. § 101. It follows that Appellants have shown that the Examiner
erred in finding that independent claim 27 is directed to non-statutory
subject matter.
35 U.S.C. § 102(b) Rejection--Teorey
Claim 1
We are not persuaded by Appellants’ arguments that: 1) Teorey fails
to teach at least one of the elements of independent claim 1; or 2) Teorey
does not anticipate independent claim 1 because CWM was introduced ten
years before Teorey’s publishing date of 1986. (Br. 13-14.) We note that
since Appellants failed to point to any limitation within independent claim 1
that was not anticipated by Teorey’s disclosure, Appellants’ arguments have

6 “[A] machine is a ‘concrete thing, consisting of parts, or of certain devices
and combination of devices.’ This ‘includes every mechanical device or
combination of mechanical powers and devices to perform some function
and produce a certain effect or result.’” In re Ferguson, 558 F.3d 1359,
1364 (quoting In re Nuijten, 500 F.3d 1346, 1355 (Fed. Cir. 2007), reh'g
denied en banc, 515 F.3d 1361 (Fed. Cir. 2008), cert. denied, 129 S. Ct. 70
(2008)).
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no basis in the claim. Further, Appellants are reminded that merely
reiterating what a claim recites or making a general allegation of
patentability is not a separate patentability argument. See Ex parte Belinne,
No. 2009-004693, slip op. at 7-8 (BPAI Aug. 10, 2009) (informative); see
also 37 C.F.R. § 41.37(c)(1)(vii). Additionally, we note that Appellants did
not file a Reply Brief in response to the Examiner’s Answer. Accordingly,
since Appellants failed to provide any substantive arguments pertaining to
the limitations explicitly recited in independent claim 1, Appellants have
failed to persuasively rebut the Examiner's rejection. It follows that
Appellants have not shown that the Examiner erred in finding that Teorey
anticipates independent claim 1.

Claims 13, 15, and 27
Appellants do not provide separate arguments for patentability with
respect to independent claims 13, 15, and 17. Therefore, we select
independent claim 1 as representative of the cited claims. Consequently,
Appellants have not shown error in the Examiner’s rejection of independent
claims 13, 15, and 27 for the reasons set forth in our discussion of
independent claim 1 above. See 37 C.F.R. § 41.37(c)(1)(vii).

35 U.S.C. § 102(b) Rejection—Farpinyo
Claim 1
Independent claim 1 recites, in relevant part:
converting logical aspects of a common warehouse model
(CWM) to corresponding design items for a relational database
by processing in a hierarchical manner the logical aspects and
creating the corresponding design items, the logical aspects
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comprising entity-relationship (ER) libraries, the ER libraries
comprising ER models, the corresponding design items
comprising design libraries, the design libraries comprising
design models.

As detailed in the Findings of Fact section above, Farpinyo discloses a
CWM-based tool (i.e., ER2CWM) that creates CWM relational database
schemas from physical data models represented by ER diagrams. (FF 3.) In
particular, Farpinyo discloses that the tool is capable of creating ER
diagrams, transforming ER diagrams to CWM format, and creating database
schemas for a DBMS. (Id.) At best, we find that Farpinyo’s disclosure
teaches a CWM-based tool that utilizes the physical aspects of a CWM to
design and create database schemas for a DBMS. However, we find that
Farpinyo fails to teach or suggest that Farpinyo’s CWM-based tool is
capable of converting the logical aspects of a CWM to corresponding design
items for a relational database, let alone hierarchically converting ER
libraries to design libraries and ER models to design models. While
Farpinyo discloses utilizing the physical aspects of a CWM to design and
create database schemas for a DBMS, it is silent in regards to utilizing the
logical aspects of a CWM. Absent a showing that Farpinyo’s CWM-based
tool converts the logical aspects of a CWM to corresponding design items
for a relational database by hierarchically converting ER libraries to design
libraries and ER models to design models, we find that the Examiner
improperly relied upon Farpinyo’s disclosure to teach the disputed
limitation.
Since Appellants have shown at least one error in the rejection of
independent claim 1, we need not reach the merits of Appellants’ other
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arguments. It follows that Appellants have shown that the Examiner erred in
finding that Farpinyo anticipates independent claim 1.
Claims 13, 15, and 27
Since independent claims 13, 15, and 27 also incorporate the
limitations discussed above, we find that Appellants have also shown error
in the Examiner’s rejection of these claims for the reasons set forth in our
discussion of independent claim 1 above.
35 U.S.C. § 103(a) Rejection—Combination of Teorey and Farpinyo
Claims 2 through 12, 14, 16 through 26, and 28 through 38
We note that Teorey does not remedy the noted deficiencies in
Farpinyo. Therefore, since dependent claims 2 through 12, 14, 16 through
26, and 28 through 38 also incorporate the noted deficiencies in Farpinyo,
we find that Appellants have also shown error in the Examiner’s rejection of
these claims for the reasons set forth in our discussion of independent claim
1 above.

V. CONCLUSIONS OF LAW
1. Appellants have shown that the Examiner erred in rejecting
claim 15 as being directed to non-statutory subject matter under 35 U.S.C.
§101.
2. Appellants have shown that the Examiner erred in rejecting
claim 27 as being directed to non-statutory subject matter under 35 U.S.C.
§101.
3. Appellants have not shown that the Examiner erred in rejecting
claims 1, 13, 15, and 27 as being anticipated by Teorey under 35 U.S.C.
§ 102(b).
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4. Appellants have shown that the Examiner erred in rejecting
claims 1, 13, 15, and 27 as being anticipated by Farpinyo under 35 U.S.C.
§ 102(b).
5. Appellants have shown that the Examiner erred in rejecting
claims 2 through 12, 14, 16 through 26, and 28 through 38 as being
unpatentable under 35 U.S.C. § 103(a).

VI. DECISION
1. We reverse the Examiner’s decision to reject claim 15 as being
directed to non-statutory subject matter under 35 U.S.C. §101.
2. We reverse the Examiner’s decision to reject claim 27 as being
directed to non-statutory subject matter under 35 U.S.C. §101.
3. We affirm the Examiner’s decision to reject claims 1, 13, 15,
and 27 as being anticipated by Teorey under 35 U.S.C. § 102(b).
4. We reverse the Examiner’s decision to reject claims 1, 13, 15,
and 27 as being anticipated by Farpinyo under 35 U.S.C. § 102(b).
5. We reverse the Examiner’s decision to reject claims 2 through
12, 14, 16 through 26, and 28 through 38 as being unpatentable under
35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

erc
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JRH
JLD
JRH

UNISYS CORPORATION
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