Ex Parte Dickens

Board of Patent Appeals and Interferences

Mar 16, 2009

09512592 (B.P.A.I. Mar. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DICKENS-SOEDER2000, LLC
____________

Appeal 2008-4652
Reexamination Control Nos. 90/005,727; 90/005,592; 90/005,628; and
90/006,541 (merged)
Reissue Application No. 09/512,592 (merged)
U.S. Patent No. 5,806,063
Technology Center 2100
____________

Decided:1 March 16, 2009
____________

Before ROMULO H. DELMENDO, SCOTT R. BOALICK, and
KEVIN F. TURNER, Administrative Patent Judges.

BOALICK, Administrative Patent Judge.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-4652
Reexamination Control Nos. 90/005,727; 90/005,592; 90/005,628; and
90/006,541 (merged)
Reissue Application No. 09/512,592 (merged)
U.S. Patent No. 5,806,063

2
DECISION ON APPEAL
Dickens-Soeder2000, LLC and Bruce Dickens appeal under 35 U.S.C.
§§ 134(a), 134(b), and 306 from a final rejection of claims 1-76.2 We have
jurisdiction under §§ 6(b), 134(a), 134(b), and 306. We AFFIRM.

Table of Contents
Page
STATEMENT OF THE CASE ............................................................. 4
Merged Reexamination and Reissue proceedings .................... 4
Appellant's invention .................................................................. 6
The references ............................................................................. 6
The rejections .............................................................................. 7
Summary ........................................................................... 7
35 U.S.C. § 112, First Paragraph .................................... 8
35 U.S.C. § 112, Second Paragraph ................................ 8
Obviousness ...................................................................... 8

FINDINGS OF FACT ........................................................................... 14
The '063 Patent ........................................................................... 14
Shaughnessy ............................................................................... 20
Hazama .................................................................................. 32
Booth .................................................................................. 34
Ohms .................................................................................. 38
The Toreson Declaration and the Winner Declaration ............. 42

2 Mr. Bruce Dickens, who does not appear to be a registered practitioner
and is the reissue applicant, filed the Appeal Brief "individually as the
inventor of United states [sic] Patent No. 5,806,063." (App. Br. 1.) The
patent is said to be assigned to Dickens-Soeder2000, LLC, of which Mr.
Dickens is said to be a member. (Id.) It appears that the Examiner has
determined that Mr. Dickens has authority to act on behalf of the patent
owner. See 37 C.F.R. § 1.565.
Appeal 2008-4652
Reexamination Control Nos. 90/005,727; 90/005,592; 90/005,628; and
90/006,541 (merged)
Reissue Application No. 09/512,592 (merged)
U.S. Patent No. 5,806,063

3
Exhibit A .................................................................................. 50
Other .................................................................................. 51

PRINCIPLES OF LAW ......................................................................... 51

ANALYSIS .................................................................................. 56
Overview .................................................................................. 56
§ 112, First and Second Paragraph Rejections ......................... 57
"Exhibit A" Issue .............................................................. 58
Claim limitation: sorting dates in the form C1C2Y1Y2 ..... 62
Claim limitation: without changing or without modifying 63
Claim limitation: pivot date or pivot year ........................ 65
Claim limitation: reformatting or storing separately ....... 66
Claim limitation: "collectively" further processing .......... 67
Claim limitation: running a program after sorting ........... 73
Claim limitation: converting at least a substantial portion 74
Claim limitation: windowing ........................................... 75
Claim limitation: opening the database ............................ 79
Claim limitation: avoiding an ambiguity by reformatting
or converting ................................................................................ 80
Claim limitation: selecting a YAYB value for the
first decade .................................................................................. 81

§ 103(a) Rejections ..................................................................... 82
Claims 1-3, 5, 7, 9, and 10 ............................................... 83
Claims 1-3: Shaughnessy / Hazama ...................... 83
Claims 1-3: Ohms / Hazama .................................. 93
Claim 5: Shaughnessy / Hazama ........................... 101
Claim 5: Ohms / Hazama ...................................... 102
Claim 7: Shaughnessy / Hazama ........................... 102
Claim 7: Ohms / Hazama ...................................... 103
Claim 9: Shaughnessy / Hazama ........................... 103
Claim 9: Ohms / Hazama ...................................... 104
Claim 10: Shaughnessy / Hazama ......................... 105
Claim 10: Ohms / Hazama .................................... 105
Summary ................................................................. 106
Appeal 2008-4652
Reexamination Control Nos. 90/005,727; 90/005,592; 90/005,628; and
90/006,541 (merged)
Reissue Application No. 09/512,592 (merged)
U.S. Patent No. 5,806,063

4
Claims 4, 6, and 8 ............................................................. 106
Claim 4: Shaughnessy / Hazama / Booth .............. 106
Claim 4: Ohms / Hazama / Booth .......................... 109
Claim 6: Shaughnessy / Hazama / Booth .............. 110
Claim 6: Ohms / Hazama / Booth .......................... 111
Claim 8: Shaughnessy / Hazama / Booth .............. 111
Claim 8: Ohms / Hazama / Booth .......................... 112
Summary ................................................................. 112
Claims 11-15 ..................................................................... 113
Claim 68 ............................................................................ 113
Claim 69 ............................................................................ 114
Claim 73 ........................................................................... 115
Claim 74 ............................................................................ 116
Claim 75 ............................................................................ 116
Claim 76 ............................................................................ 117
Claims 16-67 and 70-72 .................................................... 118

Appellant's Request to Dismiss the '6541 Proceeding ........................ 119

CONCLUSIONS .................................................................................. 120

DECISION .................................................................................. 121

STATEMENT OF THE CASE
Merged Reexamination and Reissue proceedings
U.S. Patent 5,806,063 (the '063 patent), entitled "Date Formatting and
Sorting for Dates Spanning the Turn of the Century," issued September 8,
1998 to Bruce Dickens based on application number 08/725,574 (the '574
application), filed October 3, 1996. The '063 patent issued with claims 1-15.
A certificate of correction for the '063 patent issued on December 29, 1998.
The certificate of correction corrected two minor typographical errors. The
Appeal 2008-4652
Reexamination Control Nos. 90/005,727; 90/005,592; 90/005,628; and
90/006,541 (merged)
Reissue Application No. 09/512,592 (merged)
U.S. Patent No. 5,806,063

5
real party in interest is said to be the patent owner, Dickens-Soeder2000,
LLC. (App. Br. 1.)
The Director of the USPTO, on his own initiative, ordered
reexamination of the '063 patent on December 21, 1999 and the
reexamination proceeding was assigned control number 90/005,592 (the
'5592 proceeding). A request for reexamination of the '063 patent was filed
on February 2, 2000 by third party requester Paul E. Crawford
(Requester #1) and the reexamination proceeding was assigned control
number 90/005,628 (the '5628 proceeding). The patent owner filed a reissue
application that added claims 16-76 on February 23, 2000, and the reissue
application was assigned application number 09/512,592 (the '2592
application). A request for reexamination of the '063 patent was filed on
May 16, 2000 by third party requester Ross F. Hunt Jr. (Requester #2) and
the reexamination proceeding was assigned control number 90/005,727 (the
'5727 proceeding). The '5592 proceeding, the '5628 proceeding, the '2592
application, and the '5727 proceeding were merged in a decision mailed on
November 6, 2000. A request for reexamination of the '063 patent was filed
on February 7, 2003 by third party requester Stanley B. Green
(Requester #3) and the reexamination proceeding was assigned control
number 90/006,541 (the '6541 proceeding). The '6541 proceeding was
merged into a single consolidated proceeding with the '5592 proceeding, the
'5628 proceeding, the '2592 application, and the '5727 proceeding in a
decision mailed March 12, 2004.

Appeal 2008-4652
Reexamination Control Nos. 90/005,727; 90/005,592; 90/005,628; and
90/006,541 (merged)
Reissue Application No. 09/512,592 (merged)
U.S. Patent No. 5,806,063

6
Appellant's invention
The claimed invention relates to reformatting dates stored in databases
to allow, for example, processing of dates spanning from before to after the
year 2000. ('063 patent, Abstract, col. 2, ll. 22-25.) In particular, "[t]he
present invention relates to the problem of dealing with legacy databases
wherein data is stored in a form that is ambiguous as to the century, the
so-called Y2K problem." (App. Br. 2.)

The references
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Shaughnessy US 5,630,118 May 13, 1997
(filed Nov. 21, 1994)
Hazama JP 05-027947 Feb. 5, 1993
B.G. Ohms, Computer Processing of Dates Outside the
Twentieth Century, 25, No. 2 IBM Sys. J. 244 (1986 )
("Ohms").

Booth et al., Clipper 5, A Developer's Guide, 1991 ("Booth").

Appeal 2008-4652
Reexamination Control Nos. 90/005,727; 90/005,592; 90/005,628; and
90/006,541 (merged)
Reissue Application No. 09/512,592 (merged)
U.S. Patent No. 5,806,063

7
The rejections
Summary
The Examiner rejected claims 16-67, 69-72,3 75, and 76 under 35
U.S.C. § 112, first paragraph. (Ans. 3; Final Office Action of June 10, 2005
("FA") at 3; Office Action of October 27, 2004 ("OA") at 5-9.)4 The
Examiner rejected claims 1-76 under 35 U.S.C. § 112, second paragraph.
(Ans. 3; FA 3; OA 5-9.) The Examiner also rejected claims 1-76 as being
unpatentable over the prior art. (Ans. 3; FA 3-14; OA 9-184.) The
rejections are listed in detail below.

3 The office action (OA 5) erroneously states that claim 73 was rejected
under 35 U.S.C. § 112, first paragraph. Claim 73 only was rejected under
the second paragraph of 35 U.S.C. § 112 (OA 9). Therefore, we consider the
inclusion of claim 73 to be a typographical error.
4 USPTO procedures require that rejections be fully repeated in the
Examiner's Answer and that the Board not be referenced to other actions in
the file. MPEP § 1207.02 ("An examiner's answer should not refer, either
directly or indirectly, to any prior Office action without fully restating the
point relied on in the answer."). Here, the Answer does not repeat the
rejections and the Final Office Action of June 10, 2005 ("FA") incorporates
by reference the detailed rejections found in the Office Action of October
27, 2004. In the interest of administrative and judicial economy, we have
overlooked this failure to follow procedure. However, in future appeals an
administrative remand would be appropriate. Thus, throughout this opinion
reference is made to the Office Action of October 27, 2004 ("OA") for
details of the rejections.
Appeal 2008-4652
Reexamination Control Nos. 90/005,727; 90/005,592; 90/005,628; and
90/006,541 (merged)
Reissue Application No. 09/512,592 (merged)
U.S. Patent No. 5,806,063

8
35 U.S.C. § 112, First Paragraph
Claims 16-67, 69-72,5 75, and 76 stand rejected under 35 U.S.C.
§ 112, first paragraph, "as containing subject matter which was not described
in the specification in such a way as to reasonably convey to one skilled in
the relevant art that the inventors), at the time the application was filed, had
possession of the claimed invention."6 (FA 3; OA 5-9.)

35 U.S.C. § 112, Second Paragraph
Claims 1-76 stand rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite. (FA 3; OA 5-9.)

Obviousness
Claims 1-3, 5, 7, 9 and 10 stand rejected under 35 U.S.C. § 103(a) as
being obvious over Shaughnessy and Hazama. (FA 3; OA 10-16.)
Claims 4, 6, and 8 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Shaughnessy, Hazama, and Booth. (FA 4; OA 16-18.)
Claims 11-15 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Shaughnessy, Hazama, and Booth. (FA 4;7 OA 18-23.)

5 See n.3 supra regarding the erroneous inclusion of claim 73 in this
rejection.
6 In the detailed explanation of the rejections (OA 6-9), the Examiner also
rejects these claims for lack of an enabling disclosure.
7 The Final Office Action of June 10, 2005 erroneously states that claims
11-15 were rejected as being obvious over Shaughnessy and Hazama (FA 3)
rather than Shaughnessy, Hazama, and Booth (OA 18-23).
Appeal 2008-4652
Reexamination Control Nos. 90/005,727; 90/005,592; 90/005,628; and
90/006,541 (merged)
Reissue Application No. 09/512,592 (merged)
U.S. Patent No. 5,806,063

9
Claims 16-18, 20, 22, 24, and 25 stand rejected under 35 U.S.C.
§ 103(a) as being obvious over Shaughnessy and Hazama. (FA 4;
OA 23-28.)
Claims 19, 21, and 23 stand rejected under 35 U.S.C. § 103(a) as
being obvious over Shaughnessy, Hazama, and Booth. (FA 4; OA 26-28.)
Claims 26-30 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Shaughnessy, Hazama, and Booth. (FA 4; OA 30-35.)
Claim 31 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Shaughnessy and Hazama. (FA 5; OA 35-38.)
Claim 32 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Shaughnessy, Hazama, and Booth. (FA 5; OA 38-41.)
Claim 33 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Shaughnessy and Hazama. (FA 5; OA 41-44.)
Claims 34-59 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Shaughnessy, Hazama, and Booth. (FA 5; OA 44-55.)
Claim 60 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Shaughnessy, Hazama, and Booth. (FA 5; OA 55-58.)
Claim 61 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Shaughnessy, Hazama, and Booth. (FA 6; OA 58-62.)
Claim 62 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Shaughnessy, Hazama, and Booth. (FA 6; OA 62-65.)
Claim 63 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Shaughnessy, Hazama, and Booth. (FA 6; OA 65-69.)
Appeal 2008-4652
Reexamination Control Nos. 90/005,727; 90/005,592; 90/005,628; and
90/006,541 (merged)
Reissue Application No. 09/512,592 (merged)
U.S. Patent No. 5,806,063

10
Claim 64 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Shaughnessy, Hazama, and Booth. (FA 6; OA 69-72.)
Claim 65 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Shaughnessy, Hazama, and Booth. (FA 7; OA 72-76.)
Claim 66 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Shaughnessy and Hazama. (FA 7;8 OA 76-79.)
Claim 67 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Shaughnessy and Hazama. (FA 7; OA 79-81.)
Claim 68 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Shaughnessy and Hazama. (FA 7; OA 81-84.)
Claim 69 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Shaughnessy and Hazama. (FA 7; OA 84-86.)
Claim 70 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Shaughnessy, Hazama, and Booth. (FA 7; OA 86-90.)
Claim 71 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Shaughnessy, Hazama, and Booth. (FA 8; OA 90-93.)
Claim 72 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Shaughnessy and Hazama. (FA 8; OA 93-96.)
Claim 73 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Shaughnessy and Hazama. (FA 8; OA 96-98.)

8 The Final Office Action of June 10, 2005 erroneously states that claim 66
was rejected as being obvious over Shaughnessy, Hazama, and Booth (FA 7)
rather than Shaughnessy and Hazama (OA 79-79).
Appeal 2008-4652
Reexamination Control Nos. 90/005,727; 90/005,592; 90/005,628; and
90/006,541 (merged)
Reissue Application No. 09/512,592 (merged)
U.S. Patent No. 5,806,063

11
Claim 74 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Shaughnessy, Hazama, and Booth. (FA 8; OA 98-101.)
Claim 75 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Shaughnessy and Hazama. (FA 8; OA 101-104.)
Claim 76 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Shaughnessy, Hazama, and Booth. (FA 9; OA 104-107.)
Claims 1-3, 5, 7, 9, and 10 stand rejected under 35 U.S.C. § 103(a) as
being obvious over Ohms and Hazama. (FA 9; OA 107-111.)
Claims 4, 6, and 8 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Ohms, Hazama, and Booth. (FA 9; OA 111-113.)
Claims 11-15 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Ohms, Hazama, and Booth. (FA 9; OA 113-117.)
Claims 16-18, 20, 22, 24, and 25 stand rejected under 35 U.S.C.
§ 103(a) as being obvious over Ohms and Hazama. (FA 10; OA 117-121.)
Claims 19, 21, and 23 stand rejected under 35 U.S.C. § 103(a) as
being obvious over Ohms, Hazama, and Booth. (FA 10; OA 121-123.)
Claims 26-30 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Ohms, Hazama, and Booth. (FA 10; OA 124-127.)

Appeal 2008-4652
Reexamination Control Nos. 90/005,727; 90/005,592; 90/005,628; and
90/006,541 (merged)
Reissue Application No. 09/512,592 (merged)
U.S. Patent No. 5,806,063

12
Claim 31 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Ohms and Hazama. (OA 127-128.)9
Claim 32 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Ohms, Hazama, and Booth. (FA 10; OA 129-131.)
Claim 33 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Ohms and Hazama. (FA 10; OA 131-133.)
Claims 34-59 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Ohms, Hazama, and Booth. (FA 11; OA 133-143.)
Claim 60 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Ohms, Hazama, and Booth. (FA 11; OA 144-146.)
Claim 61 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Ohms, Hazama, and Booth. (FA 11; OA 146-149.)
Claim 62 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Ohms, Hazama, and Booth. (FA 11; OA 149-151.)
Claim 63 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Ohms, Hazama, and Booth. (FA 11; OA 151-154.)
Claim 64 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Ohms, Hazama, and Booth. (FA 12; OA 154-157.)

9 The Final Office Action of June 10, 2005 appears to have inadvertently
omitted this rejection (FA 10) due to the inadvertent omission in the Office
Action of October 27, 2004 (OA 127) of the portion of the statement of the
rejection found at page 139 of the Office Action mailed July 22, 2002. A
complete statement of the rejection may be found at pages 139-141 of the
Office Action mailed July 22, 2002. We consider these omissions to be
typographical errors.
Appeal 2008-4652
Reexamination Control Nos. 90/005,727; 90/005,592; 90/005,628; and
90/006,541 (merged)
Reissue Application No. 09/512,592 (merged)
U.S. Patent No. 5,806,063

13
Claim 65 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Ohms, Hazama, and Booth. (FA 12; OA 157-160.)
Claim 66 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Ohms, Hazama, and Booth. (FA 12; OA 160-162.)
Claim 67 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Ohms, Hazama, and Booth. (FA 12; OA 162-164.)
Claim 68 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Ohms and Hazama. (FA 12; OA 164-166.)
Claim 69 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Ohms, Hazama, and Booth. (FA 13; OA 166-169.)
Claim 70 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Ohms, Hazama, and Booth. (FA 13; OA 169-171.)
Claim 71 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Ohms, Hazama, and Booth. (FA 13; OA 171-174.)
Claim 72 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Ohms and Hazama. (FA 13; OA 174-176.)
Claim 73 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Ohms and Hazama. (FA 13; OA 176-178.)
Claim 74 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Ohms, Hazama, and Booth. (FA 14; OA 178-180.)
Claim 75 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Ohms, Hazama, and Booth. (FA 14; OA 180-182.)
Claim 76 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Ohms, Hazama, and Booth. (FA 14; OA 182-184.)
Appeal 2008-4652
Reexamination Control Nos. 90/005,727; 90/005,592; 90/005,628; and
90/006,541 (merged)
Reissue Application No. 09/512,592 (merged)
U.S. Patent No. 5,806,063

14

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.

The '063 Patent
1. According to the Specification, "[t]he present invention provides an
approach to the representation and utilization of dates stored
symbolically in databases." ('063 patent, col. 1, ll. 49-51.) "Existing
symbolic date representations are converted to a more useful form of
symbolic date representations without the addition of new data fields,
and in a manner that is performed automatically by the computer and
requires no user input." ('063 patent, col. 1, ll. 51-55 (emphasis
added).) "The approach of the invention permits direct numerical
sorting of dates." ('063 patent, col. 1, ll. 55-56.)

Appeal 2008-4652
Reexamination Control Nos. 90/005,727; 90/005,592; 90/005,628; and
90/006,541 (merged)
Reissue Application No. 09/512,592 (merged)
U.S. Patent No. 5,806,063

15
2. Figure 1 of the '063 patent is reproduced below:

Figure 1 "is a schematic representation of a computer database with
date information therein." ('063 Patent, col. 2, ll. 36-37.)

As shown in Figure 1, a computer 20 has "a read-only or random-
access memory 22, a mass-storage device 23, and a central processing
unit 24 therein." ('063 patent, col. 2, ll. 44-46.) A database 26 is
stored in the memory 22 or on the mass-storage device 23 and
"includes information in the form of symbolic representations of dates
and associated information such as events occurring on the respective
dates." ('063 patent, col. 2, ll. 46-50.)

3. The Specification teaches that "[i]n a conventional approach, the dates
are stored in a format such as M1M2/D1D2/Y1Y2 format. M indicates
month information, D day information, and Y year information, with
Appeal 2008-4652
Reexamination Control Nos. 90/005,727; 90/005,592; 90/005,628; and
90/006,541 (merged)
Reissue Application No. 09/512,592 (merged)
U.S. Patent No. 5,806,063

16
the subscript 1 or 2 indicating the first or second digit of the
designator, respectively." ('063 patent, col. 2, ll. 50-55.) Thus, "Dec.
15, 1993 is stored as 12/15/93 or 12-15-93, and Dec. 15, 2000 is
stored as 12/15/00 or 12-15-00, for example." ('063 patent, col. 2, ll.
55-57.) The Specification explains that "[i]f a numerical sort is
performed on these dates, 12/15/00 will sort chronologically prior to
12/15/93." ('063 patent, col. 2, ll. 57-59.)

4. Figure 2 of the '063 patent is reproduced below:

Figure 2 "is a block flow diagram of a preferred approach for
practicing the approach of the invention." ('063 patent, col. 2,
ll. 38-39.)

At numeral 30, a computer database 26 is provided "having symbolic
representations of dates stored therein." ('063 patent, col. 2, ll. 60-62.)
Appeal 2008-4652
Reexamination Control Nos. 90/005,727; 90/005,592; 90/005,628; and
90/006,541 (merged)
Reissue Application No. 09/512,592 (merged)
U.S. Patent No. 5,806,063

17
At numeral 32, a 10-decade window is selected. ('063 patent, col. 3, l.
4.) "That is, it is necessary that all dates in the database will be within
some period of 10 decades, or 100 years." ('063 patent, col. 3, ll. 4-6.)
The Specification teaches that:
The window may be arbitrarily selected. For example,
the decade could begin with the 1950's and end with the
2040's, or it could begin with the 1980's and end with the
2070's. The 10-decade window will normally include
some decades from the prior century and some from the
new century.

('063 patent, col. 3, ll. 8-12.)

5. According to the Specification, "[t]he first year of the 10-decade
window is represented by YAYB" ('063 patent, col. 3, ll. 13-14) and
"[i]n a commonly utilized application, YB is 0 (zero)" ('063 patent,
col. 3, l. 14) such that, for example "the 1980's first decade would be
represented by YA0 of '80'" ('063 patent, col. 3, ll. 17-18).

6. The Specification states that, "[f]or this case, a century designator
C1C2 for a date is determined, numeral 34, by comparing the value of
Y1, the first digit of the year designator for the date, with YA, the first
digit of the first decade of the 10-decade window." ('063 patent, col.
3, ll. 18-21.) Then, "C1C2 is assigned a first value if Y1 is less than YA

Appeal 2008-4652
Reexamination Control Nos. 90/005,727; 90/005,592; 90/005,628; and
90/006,541 (merged)
Reissue Application No. 09/512,592 (merged)
U.S. Patent No. 5,806,063

18
and a second value if Y1 is equal to or greater than YA." ('063 patent,
col. 3, ll. 21-23.)

7. The Specification teaches that "[i]n the case of most interest, the
10-decade window includes decades earlier than the year 2000 and
decades later than the year 2000, and YB is zero C1C2 is assigned '20'
if Y1 is less than YA and is assigned '19' if Y1 is equal to or greater
than YA." ('063 patent, col. 3, ll. 24-28.) "In that case and for
example, if YA is 5, meaning that the decade beginning in 1950 was
selected as the first decade of the 10-decade window, and if Y1Y2 is
"43", the century designator C1C2 is '20', indicating that the year in
question in the database is 2043." ('063 patent, col. 3, ll. 28-32.) "On
the other hand, if Y1Y2 is '63', the century designator C1C2 is '19',
indicating that the year in question in the database is 1963." ('063
patent, col. 3, ll. 32-34.) "This selection process is performed in a
completely automated fashion by the computer, without human input
other than to select the starting date of the 10-decade window." ('063
patent, col. 3, ll. 35-37.)

8. Next, the Specification teaches that "[t]he symbolic representations of
the dates in the database are reformatted with the values C1C2, Y1Y2,
M1M2, and D1D2, numeral 3610 of FIG. 2." ('063 patent, col. 3,
ll. 38-40.) "Once the symbolic representations of the dates are

10 Numeral 36 is not shown in Figure 2.
Appeal 2008-4652
Reexamination Control Nos. 90/005,727; 90/005,592; 90/005,628; and
90/006,541 (merged)
Reissue Application No. 09/512,592 (merged)
U.S. Patent No. 5,806,063

19
reformatted according to the procedures set forth above, the date
information may be sorted, numeral 38, or otherwise manipulated,
numeral 40, together with the entries associated with the dates." ('063
patent, col. 3, ll. 49-53.) "Such manipulation may include handling of
data associated with the dates, storing the dates and associated
information back in the data base, or other processes." ('063 patent,
col. 3, ll. 53-56.)

9. The Specification also states: "The approach of the invention has
been implemented in a computer program, a copy of which is attached
as Exhibit A. This program converts dates both before and after the
year 2000." ('063 patent, col. 3, ll. 57-60.) However, no computer
program is shown in either the printed '063 patent or in the certificate
of correction. In addition, there is nothing labeled "Exhibit A" shown
in either the printed '063 patent or in the certificate of correction.

10. Claim 1 on appeal is reproduced below:
1. A method of processing symbolic representations
of dates stored in a database, comprising the steps of

providing a database with symbolic representations
of dates stored therein according to a format wherein Ml
M2 is the numerical month designator, D1 D2 is the
numerical day designator, and Y1 Y2 is the numerical
year designator, all of the symbolic representations of
dates falling within a 10-decade period of time;

Appeal 2008-4652
Reexamination Control Nos. 90/005,727; 90/005,592; 90/005,628; and
90/006,541 (merged)
Reissue Application No. 09/512,592 (merged)
U.S. Patent No. 5,806,063

20
selecting a 10-decade window with a YA YB value
for the first decade of the window, YA YB being no later
than the earliest Y1 Y2 year designator in the database;

determining a century designator C1 C2 for each
symbolic representation of a date in the database, C1 C2
having a first value if Y1 Y2 is less than YA YB and
having a second value if Y1 Y2 is equal to or greater than
YA YB; and

reformatting the symbolic representation of the
date with the values C1 C2, Y1 Y2, M1 M2, and D1 D2 to
facilitate further processing of the dates.

Shaughnessy
11. Shaughnessy "relates to a system and method for modifying and
operating a computer system to perform date operations on date fields
having a two digit representation for the year without erroneously
mistaking the years 2000 et seq. for the years 1900 et seq." (Col. 1,
ll. 11-15.)

12. Shaughnessy teaches that one possible solution for the above noted
problem (the "Y2K problem") "would be to convert all dates within
the application system of the computer to use date fields with four
digit representations for the year." (Col. 1, ll. 31-33; see also col. 4,
ll. 11-16.) As part of such a solution, "the files which contain the data
for the date operation routine(s) would also have to be converted to
include date fields having a three or four digit representation for the
year." (Col. 4, ll. 20-23.) According to Shaughnessy, "[t]his could be
Appeal 2008-4652
Reexamination Control Nos. 90/005,727; 90/005,592; 90/005,628; and
90/006,541 (merged)
Reissue Application No. 09/512,592 (merged)
U.S. Patent No. 5,806,063

21
an expensive and time consuming process" (col. 4, ll. 23-24; see also
col. 1, ll. 33-46) and "[a] more expedient, less expensive solution to
the problem would be to modify the computer system in accordance
with the principles of the present invention" (col. 4, ll. 24-26).

13. Under the approach of Shaughnessy, "the current date operation
routines nested in the body of the application program would be
replaced with a call to one of a plurality of subroutines stored
externally from the existing application program, as opposed to the
date operation routine being reprogrammed to perform the date
operation in a new format." (Col. 4, ll. 27-33.) "The subroutines will
be able to accommodate the date format currently employed by the
application program, thus making it unnecessary to convert all of the
date fields in files containing data used by the application program
over to the new date format." (Col. 4, ll. 33-37.) In one aspect, "[t]he
call is operative to pass at least one date field which is representative
of at least two dates to the subroutine which has been called." (Col. 2,
ll. 18-20.) The subroutine determines "which of the at least two dates
corresponds to the date field according to a predetermined criteria,
perform[s] the date operation on the passed date field and return[s] a
parameter representative of the result of the date operation to the
application program for use by the application program in its further
operations." (Col. 2, ll. 20-26.) "Preferably, a plurality of subroutines
are stored that perform respective date operations selected from the
Appeal 2008-4652
Reexamination Control Nos. 90/005,727; 90/005,592; 90/005,628; and
90/006,541 (merged)
Reissue Application No. 09/512,592 (merged)
U.S. Patent No. 5,806,063

22
group consisting of a date conversion operation, a date comparison
operation, a date difference calculation operation, etc." (Col. 2,
ll. 26-30.)

14. Figure 1 of Shaughnessy is reproduced below:

Figure 1 "is a schematic block diagram of a computer system that may
be used to practice the present invention." (Col. 3, ll. 9-10.)

Figure 1 shows "an exemplary computer system 1 that may be
modified in accordance with the principles of the present invention."
(Col. 3, ll. 46-48.) The computer system 1 includes a user terminal 2,
such as a keyboard and monitor, connected to a computer 3, which
"may include or be connected to an internal or external memory

Appeal 2008-4652
Reexamination Control Nos. 90/005,727; 90/005,592; 90/005,628; and
90/006,541 (merged)
Reissue Application No. 09/512,592 (merged)
U.S. Patent No. 5,806,063

23
device 5, and also to other input or output devices 6." (Col. 3,
ll. 48-55.)

15. Figure 2 of Shaughnessy is reproduced below:

Figure 2 "is a flowchart illustrating the steps the modified computer
system performs when first encountering a date operation." (Col. 3,
ll. 11-13.)

When a date operation subroutine is called by an application program,
the system determines if this is the first date operation of the
application program (box 10). (Col. 5, ll. 10-13.) "If it is the first
date operation, the subroutine which determines the current date (box
14), the end of the 100 year cycle (box 16), and the two possible
Appeal 2008-4652
Reexamination Control Nos. 90/005,727; 90/005,592; 90/005,628; and
90/006,541 (merged)
Reissue Application No. 09/512,592 (merged)
U.S. Patent No. 5,806,063

24
century values (box 18) will be called and the information calculated
before the date operation is performed." (Col. 5, ll. 16-21.) This
"information will be used in the subroutine(s) to assign a century
value to the two digit representation of the year of the dates to be
operated on such that the subroutine can accurately perform its
intended function." (Col. 5, ll. 21-25.)

16. Figures 3 through 7 "illustrate how a computer system . . . modified in
accordance with a preferred embodiment of the present invention
calculates the above-mentioned information and assigns century
values to the dates to be operated on." (Col. 5, ll. 25-30.)

Appeal 2008-4652
Reexamination Control Nos. 90/005,727; 90/005,592; 90/005,628; and
90/006,541 (merged)
Reissue Application No. 09/512,592 (merged)
U.S. Patent No. 5,806,063

25
17. Figure 3 of Shaughnessy is reproduced below:

Figure 3 "is a flowchart illustrating the steps the modified computer
system performs to determine the current date." (Col. 3, ll. 14-15.)

In particular, the current date is determined (box 14) in a format that
uses a four digit representation of a year. (Col. 5, ll. 31-33.) Initially,
the current date is set to the operating system date (box 20) and is
compared to the date the system was installed (box 22). (Col. 5, ll.
33-40.) If the two digit year and three digit day (YYDDD) portion of
the current date is greater than or equal to the corresponding portion
Appeal 2008-4652
Reexamination Control Nos. 90/005,727; 90/005,592; 90/005,628; and
90/006,541 (merged)
Reissue Application No. 09/512,592 (merged)
U.S. Patent No. 5,806,063

26
of the system install date, then the century of the current date is set to
the century of the system install date (box 24). (Col. 5, ll. 40-45.) On
the other hand, if the current date is less than the system install date,
then the century of the current date is set to the century of the system
install date plus one (box 30). (Col. 5, ll. 52-57.) The current date is
then modified to include the century (box 26), converted to the format
CCYYMMDD, and saved (box 28). (Col. 5, ll. 46-51; col. 6, ll. 1-3.)
"Once the current date has been determined, the end of the 100 year
cycle (cycle) is determined (box 16)." (Col. 6, ll. 4-5.)

Appeal 2008-4652
Reexamination Control Nos. 90/005,727; 90/005,592; 90/005,628; and
90/006,541 (merged)
Reissue Application No. 09/512,592 (merged)
U.S. Patent No. 5,806,063

27
18. Figure 4 of Shaughnessy is reproduced below:

Figure 4 "is a flowchart illustrating the steps the modified computer
system performs to determine the end of the 100 year cycle [box 16]."
(Col. 3, ll. 16-18.)

Various parameters may be specified, including "the number of years
of future dating required (default is 10), the type 2 format,
CCYYMMDD, for the modified system install date (default is
19931231), and whether the end of the 100 year cycle is to be updated
daily (0 indicates no update of the cycle, 1 indicates daily update of
the cycle; default value is 1)." (Col. 6, ll. 7-15.) The starting date is
then set to either (1) the current date as determined above in box 14 if
daily update is selected (box 38) or (2) the system install date or a
Appeal 2008-4652
Reexamination Control Nos. 90/005,727; 90/005,592; 90/005,628; and
90/006,541 (merged)
Reissue Application No. 09/512,592 (merged)
U.S. Patent No. 5,806,063

28
default date if daily update is not selected (box 42). (Col. 6, ll. 17-20,
30-35.) "Next, the end of the 100 year cycle is determined by adding
the number of years of future dating required to the starting date (box
40)." (Col. 6, ll. 20-22.) "Two other parameters which are set are the
two possible century values (box 18)." (Col. 6, ll. 36-37.)

19. Next, Shaughnessy teaches that, "having set these parameters, a
century value can be assigned to a two digit representation of the year
based upon where the year falls in the current 100 year cycle."
(Col. 6, ll. 46-48.) "FIGS. 6 and 7 best illustrate how this century
assignment is accomplished." (Col. 6, ll. 55-56.)

Appeal 2008-4652
Reexamination Control Nos. 90/005,727; 90/005,592; 90/005,628; and
90/006,541 (merged)
Reissue Application No. 09/512,592 (merged)
U.S. Patent No. 5,806,063

29
20. Figure 6 of Shaughnessy is reproduced below:

Figure 6 "is a flowchart illustrating the steps the modified computer
system performs to accommodate dates regardless of the current
format employed by its application program." (Col. 3, ll. 22-24.)

21. Shaughnessy teaches that "the dates to be operated on will first be
converted from their original format into a type 2 format [i.e.,
YYYYMMDD] (box 50)." (Col. 6, ll. 58-62.) "If the original date
format only provided a two digit representation of the year, then the
first two digits for the year, those that correspond to the century,
would both be zero at this point" (col. 7, ll. 1-5) and "[a]ccordingly,
Appeal 2008-4652
Reexamination Control Nos. 90/005,727; 90/005,592; 90/005,628; and
90/006,541 (merged)
Reissue Application No. 09/512,592 (merged)
U.S. Patent No. 5,806,063

30
century assignment is required (box 56)" (col. 7, l. 5). "FIG. 7
illustrates how such century assignment is accomplished (box 60)."
(Col. 7, ll. 6-7.)

22. Figure 7 of Shaughnessy is reproduced below:

Figure 7 "is a flowchart illustrating the steps the modified computer
system performs to assign a century value [box 60]." (Col. 3, ll. 25-
26.)

"First, the YYMMDD portion of the type 2 date is compared to the
corresponding portion of the end of 100 year cycle date (box 62)."
Appeal 2008-4652
Reexamination Control Nos. 90/005,727; 90/005,592; 90/005,628; and
90/006,541 (merged)
Reissue Application No. 09/512,592 (merged)
U.S. Patent No. 5,806,063

31
(Col. 7, ll. 7-9.) "If the date is less than or equal to the end of 100
year cycle date, the CENTURY2 value [i.e., one of the two possible
century values] is assigned to the date (box 64)." (Col. 7, ll. 9-11.)
"If the date is greater than the end of cycle date, the CENTURY1
value [i.e., the other possible century value] is assigned to the date
(box 66)." (Col. 7, ll. 11-13.)

23. Shaughnessy teaches an example with the following parameters:
1. End of 100 year cycle=20100101, i.e., Jan. 1, 2010;
2. CENTURY1=19; and
3. CENTURY2=20.
(Col. 8, ll. 4-6.) "[I]f the date requiring century assignment is Sep. 20,
1994, which in the commonly used format of YYMMDD is 940920, it
is first converted into its type 2 format, which at the initial conversion
is represented by 00940920 (box 50)." (Col. 8, ll. 8-12.) "To assign
the century, the YYMMDD portion of this date is compared to the
YYMMDD portion of the end of 100 year cycle date (box 62)."
(Col. 8, ll. 12-14.) "Since 940920 is greater than 100101, the system
will assign this date the CENTURY1 value (box 66) of 19." (Col. 8,
ll. 14-16.) "Thus, the type 2 equivalent of Sep. 20, 1994 will now
correctly be represented by 19940920." (Col. 8, ll. 16-17.)

24. "Accordingly, regardless of the date format currently used by an
application program, date operations can be properly performed."
(Col. 8, ll. 18-20.) "All that is required is a modification of the
Appeal 2008-4652
Reexamination Control Nos. 90/005,727; 90/005,592; 90/005,628; and
90/006,541 (merged)
Reissue Application No. 09/512,592 (merged)
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32
application program to include calls to a plurality of different
subroutines which will convert the date format currently employed by
the application program into a type 2 format (or other century
significant date format, if desired), assign a century value if necessary,
perform the date operation, and return the result for further use by the
application program." (Col. 8, ll. 20-26.)

25. Shaughnessy also teaches specific exemplary date operations such as
a date comparison operation (col. 8, l. 33 to col. 12, l. 19), a date
conversion operation (col. 12, l. 22 to col. 14, l. 45), and an operation
that determines the number of days between two dates (col. 14, l. 47
to col. 18, l. 11).

Hazama
26. Hazama describes a method "[t]o guarantee the year order, even for
years after 2000 AD, with the current file format, even when the year
is managed by the last 2 digits of the date in digital files." (Abstract.)
Claim 1 of Hazama recites a "[m]ethod of guaranteeing year order
characterized in that, in a computer system that has a memory means
and a processing section, when the last 2 digits for years in the 1900's
and 2000's AD are stored in the aforementioned memory means, the
processing section replaces the code for the 10's place in the last 2
digits of the year AD with a code that maintains the year order."

Appeal 2008-4652
Reexamination Control Nos. 90/005,727; 90/005,592; 90/005,628; and
90/006,541 (merged)
Reissue Application No. 09/512,592 (merged)
U.S. Patent No. 5,806,063

33
27. Hazama teaches that although "the year 2000 must be evaluated to be
larger than the year 1999, for evaluation, only the last 2 digits of the
date are used, so since 00 is smaller than 99, year 2000 is evaluated to
be smaller than year 1999." (Paragraph [0005].) "Using 4 digits for
the date has been considered as a method of resolving this, but in this
case, it is necessary to change the data file record length and block
length, and program modifications also arise." (Paragraph [0005].)

28. Hazama teaches that:
Replacement involves numbers for years in the 2000's
where the last 2 digits are smaller than the smallest
number in the last 2 digits in years in the 1900's. For
example, when data in file (6) for years AD begin with
the year 1973, the last 2 digits are replaced using 00 (year
2000) for 72 (year 2072).

(Paragraph [0011].) "With this method, for example, if there are data
from year 1999 in file (6), up to year 2098 can be handled."
(Paragraph [0020].)

29. Under a paragraph entitled "Effect of the invention," Hazama teaches
that "[b]y replacing code so that the relative magnitudes of years are
correctly evaluated, the effect is that year order will be guaranteed
without changing data file record length or block length, and further,
without modifying programs." (Paragraph [0025].)

Appeal 2008-4652
Reexamination Control Nos. 90/005,727; 90/005,592; 90/005,628; and
90/006,541 (merged)
Reissue Application No. 09/512,592 (merged)
U.S. Patent No. 5,806,063

34
Booth
30. Booth describes aspects of Clipper 5, a "PC application development
language" (Foreword) that "is the logical next step for the language
that has slowly evolved from dBASE II" (Introduction) and "will be
supporting the needs of the database programmer well into the 90s"
(Foreword).

31. Booth teaches that "Clipper includes very powerful date manipulation
capabilities." (Page 939.) Among other things, "[d]ates are stored
internally in such a way that math operations can be performed on
dates to derive other dates," for example "[a]dding an integer to a date
will result in a future date," and "[s]ubtracting two dates will result in
the number of days between the two. (Page 939.)

32. Booth teaches that Clipper has three settings to control that control the
display of dates. (Page 939.) "One controls whether or not the
century is displayed, the second controls the format of the date, and
the third controls which century two-digit years are placed into."
(Page 939.) In particular, "[t]he SET CENTURY command
determines whether or not the year portion of a date is display with
four digits (including the century) or two digits (not including the
century)" (page 939), "[t]he SET DATE command is used to specify
which format Clipper should display dates in," (page 939), and "[t]he

Appeal 2008-4652
Reexamination Control Nos. 90/005,727; 90/005,592; 90/005,628; and
90/006,541 (merged)
Reissue Application No. 09/512,592 (merged)
U.S. Patent No. 5,806,063

35
SET EPOCH command informs the system how to handle dates that
use only two digits for the year" (page 941).

33. Booth teaches that it also is possible to set the date format using the
SET DATE FORMAT command. (Page 940.) "One benefit of the
date format syntax is that it allows a character string to be used to
determine the date format, rather than a literal value." (Page 940.)
The format string is twelve or fewer characters and is a combination
of the following characters:
YYYY Four digit year
YY Two digit year
MM Month number
DD Day number

(Pages 940-941.)

34. Regarding the SET EPOCH command, Booth teaches that:
[w]hen a two-digit year is entered into a date, its year
digits are compared with the year digits of the epoch
setting to determine the century to place the date into. If
the two digits are prior to the setting of SET EPOCH, the
year is assumed to be in the next century. If the digits are
greater than or equal to the SET EPOCH setting, the year
is assumed to be in the current century.

(Page 941.) The default setting is 1900, which "forces any date
entered to be considered a date in the twentieth century." (Page 941.)

Appeal 2008-4652
Reexamination Control Nos. 90/005,727; 90/005,592; 90/005,628; and
90/006,541 (merged)
Reissue Application No. 09/512,592 (merged)
U.S. Patent No. 5,806,063

36
35. Booth teaches the following SET EPOCH command example:

set epoch to 1900
mdate :=ctod11("01/22/89")
? year(mdate) // displays 1989
set epoch to 1990
mdate := ctod("01/22/89")
? year(mdate) // displays 2089

(Page 942.) In other words, when the SET EPOCH setting is 1900,
the two digit year "89" is greater than the setting and therefore is
interpreted as the year 1989. But when the SET EPOCH setting is
1990, the two digit year "89" is less than the setting and therefore is
interpreted as the year 2089.

36. Booth teaches that "Clipper provides a large number of functions to
extract components of date variables and to convert dates to string
formats." (Page 942.) One of these functions, the date to string or
DTOS() function, "takes a date variable as a parameter and returns a
string in the format: YYYYMMDD." (Page 945.) "The returned
string can be used to arrange dates in chronological sequence,
regardless of the date format" and, "[f]or example, you could use
DTOS() to create an index which will cause the log entries in a
database to appear in chronological date sequence." (Page 945.)

11 The "ctod" function "reads a character string and attempts to map it into
the current date format. If the string is successfully mapped, a date variable
will be returned." (Page 943.)
Appeal 2008-4652
Reexamination Control Nos. 90/005,727; 90/005,592; 90/005,628; and
90/006,541 (merged)
Reissue Application No. 09/512,592 (merged)
U.S. Patent No. 5,806,063

37
37. Booth teaches that "Clipper provides two ways to order the database
by keys: sorting and indexing." (Page 839.) "Sorting physically
rearranges the records in the database while indexing prepares a
second file, called the index, which logically orders the record in the
database." (Page 839.)

38. Regarding sorting, Booth teaches that "[y]ou can create a new sorted
database file from an existing .DBF by using the Clipper SORT
command." (Page 839.) The SORT command includes several
parameters. Among other things, the SORT command includes a
parameter that specifies the name of a new file to create and a
parameter to indicate which fields should be sorted on,
where more than one field may be specified. (Page 839.) "Clipper
supports any number of sort fields." (Page 839.) The SORT
command also includes a parameter to indicate which
records should be sorted, which defaults to all records. (Page 840.)
"Normally the fields will be sorted in ascending case-sensitive
sequence" (page 839) but other options such as descending order and
case insensitive order, which is "known as dictionary order" (page
840), may be specified (pages 839-840).

39. Booth teaches that "[o]nce the SORT operation is complete, you have
a second .DBF file." (Page 841.) Booth further teaches that "[y]ou
could erase the old file and rename the sorted version to take
Appeal 2008-4652
Reexamination Control Nos. 90/005,727; 90/005,592; 90/005,628; and
90/006,541 (merged)
Reissue Application No. 09/512,592 (merged)
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38
advantage of the speed increase offered by using a sorted file" (page
841) and gives the following example:
use CUSTOMER new
if lastrec() > 0
sort to New_cust on id_code/A all
if file("New_cust.dbf")
close databases
rename CUSTOMER.DBF to CUSTOMER.OLD
rename NEW_CUST.DBF to CUSTOMER.DBF
endif
endif
use
use CUSTOMER new

(Page 841.)

Ohms
40. Ohms describes "practical solutions to problems envisioned in
extending computer processing of dates beyond the twentieth
century." (Page 244.) "Methods of using existing date formats are
explained" (page 244) and "[t]he use of a format termed the Lilian
date format . . . is introduced" (page 244).

41. Ohms teaches that "[t]ypically, dates are displayed and stored in the
Julian and Gregorian formats" and "[c]oncepts and formats of both
Julian and Gregorian date formats are discussed later in this paper."
(Page 244.) "The Gregorian date format consists of month, day of
month, and year." (Page 244.) "The two positions traditionally used
Appeal 2008-4652
Reexamination Control Nos. 90/005,727; 90/005,592; 90/005,628; and
90/006,541 (merged)
Reissue Application No. 09/512,592 (merged)
U.S. Patent No. 5,806,063

39
in both Julian and Gregorian date formats implicitly represent a year
within a century" but "this system is inadequate for representing dates
in more than one century." (Page 245.) "For example, it is
ambiguous as to whether 03 represents the year 1903 or the year
2003." (Page 245.) On the other hand, Ohms explains that "[t]he
Lilian date format avoids the ambiguity by using seven positions for
the number of days from the beginning of the Gregorian calendar,
October 15, 1582." (Page 245.)

42. Ohms teaches that "[e]nd users usually enter two digits for the year in
a date and understand the ambiguity that this represents. Therefore,
even at the turn of the century, to avoid adverse user reaction,
programs must continue to function with only two digits for year."
(Page 248.) "The inference of the year 1997 from 97 and 2003 from
03 must continue." (Page 248.)

43. Ohms teaches that:
it may be necessary to provide a conversion function that
receives a definition of the implied century as a
parameter. An excellent way to do this unambiguously is
to specify a year as the desired starting point of a 100-
year range. For example, if the starting year for the range
is specified as 1925, dates with year digits of 25 through
99 would be between 1925 and 1999, and dates with year
digits of 00 through 24 would lie between 2000 and
2024.

(Page 248.)

Appeal 2008-4652
Reexamination Control Nos. 90/005,727; 90/005,592; 90/005,628; and
90/006,541 (merged)
Reissue Application No. 09/512,592 (merged)
U.S. Patent No. 5,806,063

40
44. Ohms teaches various date conversion functions. (Page 246.) The
disclosed function names "are synthesized from two 3-letter
mnemonic parts" where "[t]he first part is a description of the target,
and the second part is a description of the source." (Page 246.) The
mnemonic parts include the name "GRG" for Gregorian date and
"SGR" for short Gregorian date. (Page 246.) "Arguments presented
to any of the conversion functions are always presented in the same
order: new date (target); old date (source); range date (control), when
required; and Gregorian format [specifier(s)], when required."
(Page 246.) "Table 1 illustrates the format for conversion arguments"
and "[t]he format descriptions in Table 1 refer to the type of data -- D
for day, M for month, and Y for year, as well as the number of
positions (e.g., YY for two year positions) -- that the data occupy."
(Page 246.) Table 1, entitled "Examples of conversion function
arguments," includes the argument "target-SGRGRG (source, YMD,
MDY)" which is described as "[c]onversion of a short Gregorian
(YYMMDD) date from a Gregorian (MMDDYYYY) date." (Page
247.) Thus, Ohms also suggests a conversion function from a short
Gregorian (YYMMDD) date to a Gregorian (MMDDYYYY) date.
(Pages 246-247.)

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90/006,541 (merged)
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45. Ohms teaches that
It is not necessary to change date formats in files,
because it is possible to change the programs only, so
that the implied century in a date is recognized. Of
course, in the vast majority of cases, that is exactly what
does take place. Dates familiarly and implicitly exist
within the 100-year range beginning with 1900 or 1901.
Thus it is necessary merely to modify the programs so
that the 100-year range starts at a later date. A beginning
date set eighty years prior to the current systems date
may be a reasonable convention. This is well within the
range now in use.

(Page 249.)

46. Regarding storage, Ohms teaches that "[t]he two main considerations
pertaining to storage are (1) the cost of storing large quantities of data;
and (2) the computational cost of converting records within computer
files to larger date-field sizes." (Page 249.) "When millions of dates
are stored, as they are in most business systems, every additional byte
required to save a single date multiplies to millions of additional bytes
of storage" and "[t]he programming necessary to accommodate larger
date-field sizes in records further complicates date conversion."
(Page 249.)

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The Toreson Declaration and the Winner Declaration
47. Paragraph 162 of the Toreson Declaration states that:
As to written description, the Specification is
reasonably clear in indicating that the applicant as of the
filing date of the application leading to the Dickens
patent was in possession of the invention, even if new
terminology is used in the claims. The claimed sort
based upon the reformatted CCYY format is a broader
genus. As indicated in the specification and as would
have been well known in the art at the time of the filing
of the Dickens patent, data may be stored in databases in
other than YYMMDD and in which the Y2K ambiguity
problem still exists, e.g., YYMMMDD, where the MMM
is a three letter designation of the month. For such date
data formats, the present invention, as would be
understood by those skilled in the art from the disclosure
of the Dickens patent, with or without Exhibit A, is just
as useful, along with the reformatting of the YY to
CCYY. The claim, therefore, is a broader genus, which
would cover the originally recited CCYYMMDD as well
as, e.g., CCYYMMMDD.

(Toreson Declaration, paragraph 162.) Paragraph 162 of the Winner
Declaration contains the same statement. (Winner Declaration,
paragraph 162.)

48. Paragraph 164 of the Toreson Declaration states that:
There is quite an adequate disclosure in the
original specification including the Certificate of
Correction, from both a written description and an
enabling perspective. The addition of the Exhibit A
further supports the claim language. The "without
modifying" and/or "without changing" recitations refer to
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the fact that the original database date entry as contained
in, e.g., a legacy database itself, is what is not modified.
Clearly modification occurs according to the claims of
the [sic] what is taken from or extracted from the date
data field in, e.g., a legacy database, but this
modification/reformatting according to the claims is done
without also modifying/reformatting the originally stored
date data as it is in the database itself and remains so
after the converting and reformatting according to the
claimed invention. This is adequately described in the
written description and fully enabled.

(Toreson Declaration, paragraph 164.) Paragraph 164 of the Winner
Declaration contains the same statement. (Winner Declaration,
paragraph 164.)

49. Paragraph 166 of the Toreson Declaration states that:
This term is well known in the art. By way of
example, United States Patent No. 6,317,746, entitled
SOFTWARE DATE AND TIME SERVICES, issued to
Franklin, Jr., et al. on November 13,2001, and United
States Patent No. 6,003,028, entitled IMPLEMENTING
EXTENDED NUMERIC RANGE WITHIN A TWO-
DIGIT SOFTWARE REPRESENTATION, issued to
Koenig on December 14, 1999 use the term in connection
with windowing techniques utilizing, e.g., a ten decade
window. The Examiner has himself used the term
throughout the prior and present Office Actions in
rejecting claims with and without the term "pivot year" in
the claim language. The term simply means, as the
Examiner himself has used it, the starting year for the
window.

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44
(Toreson Declaration, paragraph 166.) Paragraph 166 of the Winner
Declaration contains the same statement. (Winner Declaration,
paragraph 166)

50. Paragraph 168 of the Toreson Declaration states that:
As discussed above with respect to claims 33,
60-61, 64-65 and 70 regarding the 'without changing' or
'without modifying' recitations, the Specification as
originally filed along with the Certificate of Correction,
adequately discloses and enables the recitations regarding
"separate reformatting" and "separate storing." The
addition of Exhibit A further supports such recitations.

(Toreson Declaration, paragraph 168.) Paragraph 168 of the Winner
Declaration contains the same statement. (Winner Declaration,
paragraph 168.)

51. Paragraph 170 of the Toreson Declaration states that:
The original disclosure and claims disclose a
process whereby "each" or "all" of the dates stored in a
database, e.g., a legacy database, wherein the stored
format includes only two year date characters, are
reformatted to contain four year date characters, followed
by a process of, e.g., sorting or manipulating, based on all
of the reformatted dates. The Exhibit A disclosure
further supports this interpretation of the claims. The
term "collectively" is not used in the original disclosure.
However the term serves to define over the art, e.g.,
Shaughnessy, where, e.g., one date from the database and
one fixed date, or two dates from the database, are
compared to each other, in the called subroutine, as
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45
opposed to all of the data from the database being
manipulated, e.g., date sorted "collectively."

(Toreson Declaration, paragraph 170.) Paragraph 170 of the Winner
Declaration contains the same statement. (Winner Declaration,
paragraph 170.)

52. Paragraph 172 of the Toreson Declaration states that:
As noted in the Specification of the Dickens
patent:

Once the symbolic representations of the dates are
reformatted according to the procedure set forth above,
the date information may be sorted, numeral 38, or
manipulated, numeral 40, together with the entries
associated with the dates. Such manipulation may
include handling of the data associated with the dates,
storing the dates and associated information back in the
data base, or other processes.

(Toreson Declaration, paragraph 172.) Paragraph 172 of the Winner
Declaration contains the same statement. (Winner Declaration,
paragraph 172.)

53. Paragraph 175 of the Toreson Declaration states that:
A person skilled in the art at the time of the filing
of the application leading to the Dickens patent would
have understood from the disclosure of the Dickens
patent, with or without Exhibit A, that the storage of
databases, particularly of extensive nature, may be
contained in memory in variously segmented ways, e.g.,
on pages of extended memory, or organized by, e.g., data
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46
entry number. In addition it would have been understood
that the process of the present invention, depending upon
the particular application program being utilized and the
particular kind of "manipulation" being done, may
effectively run on a substantially [sic] portion of the
database containing a substantial portion of all of the,
e.g., date data fields, but not necessarily all of them.
Applicant's claims are not limited to only those instances,
where the recitation "each" or "all" as distinguishing over
prior art, e.g., Shaughnessy, would require that each and
every date data field is reformatted. In addition those
skilled in the art would have appreciated that the database
may contain several different date data fields associated
with each particular data entry in the database and the
sorting or other manipulation may only be concerned
with one such field, and the conversion, therefore, only
necessary in that instance and only as to that field. The
program listing in Exhibit A is exemplary. For example,
the "tools" database may have other date data fields
besides "last_inv.dat", e.g., purchase.dat or
last_maintenance.dat. The claims as originally filed
would cover that situation and the added claims rejected
above by the Examiner simply further clarify this fact.

(Toreson Declaration, paragraph 175.) Paragraph 175 of the Winner
Declaration contains the same statement. (Winner Declaration,
paragraph 175.)

54. Paragraph 177 of the Toreson Declaration states that:
The disclosure of the Dickens patent, even without
Exhibit A, and also with Exhibit A, fully describes the
claim recitation "by windowing the symbolic
representations of each of the respective dates as stored
in the at least one date field of the database against a
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pivot year represented by one of the symbolic
representations of the dates as stored in the at least one
date field of the database ...." Windowing is a well
known and recognized term in the art, and as noted above
the pivot year, meaning the earliest date in the window, is
also a well known and recognized term of art. Even if
the disclosure of the Dickens patent, with or without
Exhibit A, does not specifically use the term
"windowing" or the term "pivot year," one skilled in the
art at the time of the filing of the Dickens patent would
have understood the disclosure to contemplate and fully
describe and enable the claim limitation.

(Toreson Declaration, paragraph 177.) Paragraph 177 of the Winner
Declaration contains the same statement. (Winner Declaration,
paragraph 177.)

55. Paragraph 179 of the Toreson Declaration states that:
Applicant asserts that the step of opening the
database is at least inherent in the disclosure of the
Dickens patent. One skilled in the art would have
understood that to get at the date data field stored in the
database in the Y2K ambiguous format in order to
reformat it to not be Y2K ambiguous, the database would
initially have to be opened up for such access. Exhibit A,
in addition, specifically includes a program step opening
the "tools" database.

(Toreson Declaration, paragraph 179.) Paragraph 179 of the Winner
Declaration contains the same statement. (Winner Declaration,
paragraph 179.)

Appeal 2008-4652
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56. Paragraph 181 of the Toreson Declaration states that:
Applicant submits that there is a full description of
and enablement of the claims recitation of a process for
working on a "database utilizing symbolic
representations of the dates stored in the at least one date
field of the database, which are in a format that creates
ambiguity between dates in each of a pair of adjacent
centuries," and for the subsequent recitation of
"converting each of the symbolic representations of dates
stored in the at least one date field of the database to a
symbolic representation of each of the respective dates
that does not create the ambiguity .... " The specification
says that the problem being addressed is:

However, with the turn of the century at Jan.
1, 2000, the representation and utilization of dates
becomes more complex. Using the numerical form
above, Dec. 15, 2000 is represented as 12/15/00. If
a numerical sort is performed on 12/15/93 and
12/15/00, the later date 12/15/00 sorts as the first-
occurring date, an incorrect result.
Sets of dates spanning the turn of the
century and associated with past, current, and
future activities are now stored in many databases.
When stored in the conventional formats discussed
above, those dates will not readily be used and
numerically sorted in chronological order.

In other words, because of the utilization of only
two date data characters, the century of the date is
ambiguous, and the process of the present invention will
remove that ambiguity. That is, the date data format that
is ambiguous in two characters is converted to one in
four characters that is not ambiguous in a disclosed
embodiment of the invention.

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49
(Toreson Declaration, paragraph 181.) Paragraph 181 of the Winner
Declaration contains the same statement. (Winner Declaration,
paragraph 181.)

57. Paragraph 183 of the Toreson Declaration states that:
The specification and claims are perfectly clear on
the meaning of the value of YAYB. It is the "first year of
the 10-decade window." (Col 3, line 13). The full
recitation of the claim to which the Examiner refers
recites "selecting a 10-decade window with a YAYB.
value for the first decade of the window .... " This is
precisely the same as saying that the "value" of YAYB is
the two digit year value of the first year in the 10-decade
window. Contrary to the Examiner's suggestion, the
claim does not call for setting the "value for a decade,"
even if in the context of the Specification and claim
language there would be any doubt that "the value of a
decade" is ten years. The claim clearly calls for a "
YAYB.value" which is "for the first decade of the [10
decade] window .... " It is also the same value as for the
first year in the 10-decade window.

(Toreson Declaration, paragraph 183.) Paragraph 183 of the Winner
Declaration contains the same statement. (Winner Declaration,
paragraph 183.)

Appeal 2008-4652
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50
Exhibit A
58. Exhibit A, presented in "Evidence Appendix B" of the Appeal Brief,
is reproduced below:

Exhibit A shows a computer program listing.

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Other
59. The ordinary meaning of "collectively" includes "in a collective sense
or manner: . . . in the aggregate: by collective acts." Webster's Third
New International Dictionary of the English Language Unabridged
445 (1971).

60. The ordinary meaning of "collective" includes "formed by collecting :
gathered into a mass, sum, or body : AGGREGATED." Webster's
Third New International Dictionary of the English Language
Unabridged 444 (1971); see also Webster's New World Dictionary
Third College Edition 274 (1994) ("formed by collecting; gathered
into a whole").

PRINCIPLES OF LAW
Under the written description requirement of 35 U.S.C. § 112, first
paragraph, the disclosure of the application relied upon must reasonably
convey to one of ordinary skill in the art that, as of the filing date of the
application, the inventor had possession of the later claimed subject matter.
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991). The
specification need not describe the claimed subject matter in exactly the
same terms as used in the claims, but it must contain an equivalent
description of the claimed subject matter. Lockwood v. American Airlines,
Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997).
Appeal 2008-4652
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The first paragraph of 35 U.S.C. § 112 also requires that the
specification of a patent enable any person skilled in the art to which it
pertains to make and use the claimed invention. Although the statute does
not say so, enablement requires that the specification teach those in the art to
make and use the invention without "undue experimentation." In re Wands,
858 F.2d 731, 737 (Fed. Cir. 1988). Whether undue experimentation is
required is a conclusion reached by weighing several underlying factual
inquiries. Id. at 736.
A specification need not disclose what is well known in the art.
Lindemann Maschinenfabrik GmbH v. American Hoist & Derrick Co., 730
F.2d 1452, 1463 (Fed. Cir. 1984). However, this is merely a rule of
supplementation, not a substitute for a basic enabling disclosure. Genentech,
Inc. v. Novo Nordisk, A/S, 108 F.3d 1361, 1366 (Fed. Cir. 1997). It means
that the omission of minor details does not cause a specification to fail to
meet the enablement requirement. Id. It is the specification, not the
knowledge of one skilled in the art, that must supply the novel aspects of an
invention in order to constitute adequate enablement. Id.
The purpose of the second paragraph of 35 U.S.C. § 112 "is to provide
those who would endeavor, in future enterprise, to approach the area
circumscribed by the claims of a patent, with the adequate notice demanded
by due process of law, so that they may more readily and accurately
determine the boundaries of protection involved and evaluate the possibility
of infringement and dominance." In re Hammack, 427 F.2d 1378, 1382
(CCPA 1970). The test for definiteness under the second paragraph of 35
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U.S.C. § 112 is "whether those skilled in the art would understand what is
claimed when the claim is read in light of the specification." Orthokinetics,
Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986).
Also, during prosecution "if a claim is amenable to two or more plausible
claim constructions, the USPTO is justified in requiring the applicant to
more precisely define the metes and bounds of the claimed invention by
holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as
indefinite." Ex Parte Miyazaki, No. 2007-3300,
http://www.uspto.gov/web/offices/dcom/bpai/prec/fd073300.pdf at 11-12
(BPAI Nov. 19, 2008) (precedential).
"Section 103 forbids issuance of a patent when 'the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.'" KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
127 S. Ct. 1727, 1734 (2007) (citing Graham v. John Deere Co., 383 U.S. 1,
17-18 (1966)). In KSR, the Supreme Court reaffirmed that "[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results." Id. at 1739.
The Court explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
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54
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.
Id. at 1740. The Court also explained that:
[o]ften, it will be necessary . . . to look to interrelated teachings
of multiple patents; the effects of demands known to the design
community or present in the marketplace; and the background
knowledge possessed by a person having ordinary skill in the
art, all in order to determine whether there was an apparent
reason to combine the known elements in the fashion claimed
by the patent at issue.
Id. at 1740-41.
"[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). "To
facilitate review, this analysis should be made explicit." KSR, 127 S. Ct. at
1741. However, "the analysis need not seek out precise teachings directed to
the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ." Id.
The Supreme Court noted that "[i]n many fields it may be that there is
little discussion of obvious techniques or combinations, and it often may be
the case that market demand, rather than scientific literature, will drive
design trends." KSR, 127 S. Ct. at 1741. "Under the correct analysis, any
need or problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in
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55
the manner claimed." Id. at 1742. The Court also noted that "[c]ommon
sense teaches . . . that familiar items may have obvious uses beyond their
primary purposes, and in many cases a person of ordinary skill will be able
to fit the teachings of multiple patents together like pieces of a puzzle." Id.
"A person of ordinary skill is also a person of ordinary creativity, not an
automaton." Id.
Furthermore, the Supreme Court explained that "[w]hen there is a
design need or market pressure to solve a problem and there are a finite
number of identified, predictable solutions, a person of ordinary skill has
good reason to pursue the known options within his or her technical grasp."
KSR, 127 S. Ct. at 1742. "If this leads to the anticipated success, it is likely
the product not of innovation but of ordinary skill and common sense," id.
and, in such an instance "the fact that a combination was obvious to try
might show that it was obvious under § 103" id.
During examination of a patent application, a claim is given its
broadest reasonable construction consistent with the specification. In re Am.
Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). "[T]he
words of a claim 'are generally given their ordinary and customary
meaning.'" Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en
banc) (internal citations omitted). The "ordinary and customary meaning of
a claim term is the meaning that the term would have to a person of ordinary
skill in the art in question at the time of the invention, i.e., as of the effective
filing date of the patent application." Id. at 1313.

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ANALYSIS
Overview
Appellant contends that the Examiner erred in rejecting claims 1-76.
(App. Br. 10-30; Reply Br. 1-11; Response to Office Action received
February 19, 2002 ("Feb. Response") at 2-38; Response to Office Action
received December 23, 2002 ("Dec. Response") at 2-88.)12 Reviewing the
record before us and the findings of facts cited above, we do not agree that
the Examiner erred in rejecting:
claims 16-67 and 70-72 under 35 U.S.C. § 112, first paragraph;
claims 16-67 and 70-72 under 35 U.S.C. § 112, second paragraph;
claims 1-15, 68, 69, and 73-76 as being obvious under 35 U.S.C.
§ 103(a) in view of various combinations of Shaughnessy, Hazama, and
Booth; and
claims 1-15, 68, 69, and 73-76 as being obvious under 35 U.S.C.
§ 103(a) in view of various combinations of Ohms, Hazama, and Booth.

12 In order for arguments to be considered by the Board, our rules require
that they be included in the Briefs. 37 C.F.R. § 41.37(c)(1)(vii) ("Any
arguments or authorities not included in the brief or a reply brief . . . will be
refused consideration by the Board, unless good cause is shown."). Here,
the Briefs merely attempt to incorporate by reference (App. Br. 9) arguments
previously presented in the Response to Office Action received February 19,
2002 ("Feb. Response") and the Response to Office Action received
December 23, 2002 ("Dec. Response"). This does not comply with our
rules. In the interest of administrative and judicial economy, we have
overlooked this failure. However, in future appeals an administrative
remand would be appropriate.
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57
However, we agree with Appellant that the Examiner erred in
rejecting:
claims 69, 75, and 76 under 35 U.S.C. § 112, first paragraph; and
claims 1-15, 68, 69, and 73-76 under 35 U.S.C. § 112, second
paragraph.
In addition, the rejections of claims 16-67 and 70-72 as being obvious
under 35 U.S.C. § 103(a) in view of various combinations of Shaughnessy,
Hazama, and Booth and also in view of various combinations of Ohms,
Hazama, and Booth are vacated based on the indefiniteness of the claimed
subject matter. It should be understood, however, that our decision to vacate
these rejections does not reflect on their underlying merits.

§ 112, First and Second Paragraph Rejections
Appellant argues that the Examiner erred in rejecting claims 16-67,
69-72, 75, and 76 under 35 U.S.C. § 112, first paragraph, and in rejecting
claims 1-76 under 35 U.S.C. § 112, second paragraph. (App. Br. 10-11;
Reply Br. 1-5; Dec. Response 54-65.) The issues presented are:
1. Has Appellant shown that the Examiner erred in rejecting claims
16-67, 69-72, 75, and 76 under 35 U.S.C. § 112, first paragraph?
2. Has Appellant shown that the Examiner erred in rejecting claims
1-76 under 35 U.S.C. § 112, second paragraph?
Appeal 2008-4652
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90/006,541 (merged)
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For reasons that follow, we find that Appellant has not shown that the
Examiner erred in rejecting:
claims 16-67 and 70-72 under 35 U.S.C. § 112, first paragraph; and
claims 16-67 and 70-72 under 35 U.S.C. § 112, second paragraph;
However, we find that Appellant has shown that the Examiner erred in
rejecting:
claims 69, 75, and 76 under 35 U.S.C. § 112, first paragraph; and
claims 1-15, 68, 69, and 73-76 under 35 U.S.C. § 112, second
paragraph.
Because many of the claims have been rejected based upon multiple
claim limitations, our analysis proceeds in a claim limitation by claim
limitation fashion. Initially, however, we turn to an objection against the
introduction of new matter into the Specification regarding Appellant's
proffered "Exhibit A."

"Exhibit A" Issue
Appellant has amended13 the Specification by adding a computer
program listing denoted as "Exhibit A".14 Under 35 U.S.C. § 132, the
Examiner objected to this amendment as new matter. (OA 1.)

13 For example, see pages 1-2 of the Response to Office Action of
December 23, 2002 and pages 3-5 of the "Substitute Housekeeping
Amendment" received June 29, 2004.
Appeal 2008-4652
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Appellant argues that Exhibit A was filed with the '574 application
and therefore is not new matter. (App. Br. 10-11; 29-30.) Appellant
contends that "Exhibit A should have been published with the Dickens
patent as issued." (Reply Br. 2.) Appellant further contends that the
Examiner had previously indicated that a certificate of correction to add
Exhibit A was not appropriate during the prosecution of a reissue
application, and therefore one was not sought.15 (Reply Br. 2.)
The Examiner replies that Exhibit A is not supported by the original
disclosure and is not part of the printed '063 patent.16 The Examiner also
points out that "the Applicant did not specifically indicate, for the record, the
mailing date and the specific correspondence where the 'Examiner has
indicated that a Certificate of Correction during the Reissue is not
appropriate to correct the fact [that] this Exhibit was not contained in the
Patent as issued.'" (Ans. 10.)
We agree with the Examiner. Although the Specification makes
reference to an Exhibit A, there is no Exhibit A contained in the printed '063
patent. (FF 8.) Neither is Exhibit A found in the certificate of correction for

14 In Evidence Appendix B, section B(3), of the instant Appeal Brief
Appellant has submitted a copy of the '574 application transmittal letter
along with a purported copy of Exhibit A (see FF 58).
15 Appellant refers to footnote 9 of the Appeal Brief for the location of this
assertion by the Examiner. (Reply Br. 2, n.1.) Footnote 9, in turn, refers to
paragraph 4 on page 2 of the Office Action of July 22, 2002. (App. Br., n.9.)
However, as discussed infra, this paragraph does not support Appellant's
contention.
16 We note that Exhibit A also is not part of the '063 patent certificate of
correction that issued on December 29, 1998.
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the '063 patent that issued December 29, 1998. (FF 8.) Therefore, the
Examiner correctly objected to Examiner A as new matter.
Appellant misreads paragraph 4 on page 2 of the Office Action of July
22, 2002. That paragraph of the Office Action stated: "Changes made in the
certificate of correction have not been incorporated into the specification of
the reissue application. Applicant is required to submit a substitute
specification which complies with reissue practice." (Office Action of July
22, 2002 at page 2.) Contrary to Appellant's assertion, the Examiner did not
state that a certificate of correction to add Exhibit A would not be
appropriate during prosecution of a reissue application. Instead, per MPEP
§ 1411.01,17 the Examiner merely required a substitute specification to
incorporate the changes made by the certificate of correction that issued
December 29, 1998. In other words, the "certificate of correction"
referenced in paragraph 4 is the certificate of correction for the '063 patent
that issued December 29, 1998, which corrected a minor typographical error
in the Abstract and a minor typographical error in the References Cited
section of the '063 patent. The "certificate of correction" referenced by the
Examiner in paragraph 4 is not some potential future certificate of correction
to add Exhibit A. In paragraph 4, the Examiner did not discourage the filing
of an additional certificate of correction to add Exhibit A to the
Specification.

17 MPEP § 1411.01 states that the applicant should include changes made
by a certificate of correction in the reissue application without underlining or
bracketing. MPEP § 1411.01 also states that the Examiner may request a
clean copy of the specification with the certificate of correction changes.
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We note that in the next amendment following the Office Action of
July 22, 2002, Appellant stated:
In the Specification:

Please substitute the Abstract contained in Appendix I to
this Response, which includes the changes made to the original
body of the Specification as filed by the Certificate of
Correction, with the exception of the change in the section
"References Cited" which is not part of the Specification.

(Dec. OA 1.) Thus, Appellant complied with the Examiner's requirement to
provide a clean copy of the Specification with the changes made in the
certificate of correction of December 29, 1998. In the same amendment,
Appellant also stated:
Please add the accompanying "Exhibit A" which is contained in
Appendix 3 to this Response. "Exhibit A" is a retyped version
of the original "Exhibit A," a copy of which accompanies this
Response as Appendix 4, which was filed with the original
application leading to the Dickens patent under reexamination
and subject [sic] of the Reissue application in this Merged
Proceeding"

(Dec. OA 1-2.) Appellant did not refer to any certificate of correction when
Exhibit A was added to the Specification.
If the computer program proffered by Appellant as Exhibit A was
filed as part of the original '574 application, as Appellant asserts, then
Appellant must obtain a certificate of correction under 35 U.S.C. § 254 in
order for it to become part of the Specification. Appellant admits that no
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such action has been taken. (Reply Br. 2.) The Board does not have the
authority to make the correction sought by Appellant.
Accordingly, we detect no error in the Examiner’s determination that
the amendment to add Exhibit A into the Specification introduces new
matter in violation of 35 U.S.C. § 132 (and 35 U.S.C. § 251 with respect to
the reissue application).18

Claim limitation: sorting dates in the form C1C2Y1Y2
The Examiner rejected claims 32 and 69, which recite the limitation of
sorting dates in the form C1C2Y1Y2, because "the specification only
describes sorting with the format C 1 C2Y 1 Y2M 1 M2D 1 D2" and "a
CCYY sort is not merely a broader genus for the species of CCYYMMDD."
(OA 6; see also Ans. 5-6.) We do not agree.
Instead, we agree with Appellant that the Examiner failed to offer any
persuasive reasons why the original disclosure would not have reasonably
conveyed to one skilled in the relevant art that the inventor had possession of
the claimed subject matter. (Dec. Response 57-58; App. Br. 11; Reply Br. 3;
see also FF 3, 8, 47.) In particular, the Specification discloses sorting dates
in the form Y1Y2M1M2D1D2 (FF 3) and in the form C1C2Y1Y2M1M2D1D2
(FF 8). The Examiner has not offered persuasive reasons or evidence to
show that one of ordinary skill in the art would not have understood that the

18 Nevertheless, because the Specification has been amended to add
Exhibit A, albeit improperly, we consider infra both Exhibit A and
Appellant's arguments regarding Exhibit A in our analysis of the rejections
under 35 U.S.C. § 112.
Appeal 2008-4652
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90/006,541 (merged)
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inventor had possession of sorting dates in other similar formats with fewer
data fields, such as, for example, dates in the claimed form of C1C2Y1Y2. In
other words, given the disclosure in the Specification that the inventor had
possession of sorting dates in similar formats with more data fields, we do
not see why the inventor would not also have had possession of sorting dates
in similar formats with fewer data fields. Specifically, given the disclosure
in the Specification of sorting dates with century, year, month, and day data
fields, we do not see why the inventor would not also have had possession of
sorting dates with only century and year data fields. Thus, one of ordinary
skill in the art would have understood that Appellant had possession of the
claimed sorting of dates in the form C1C2Y1Y2 as of the filing date of the
'063 patent. In addition, we agree with Appellant (id.) that the disclosure of
sorting in a C1C2Y1Y2M1M2D1D2 format would enable one of ordinary
skill in the art to sort just the C1C2Y1Y2 portion without undue
experimentation. Furthermore, the Examiner has not adequately explained
why those skilled in the art would not understand what is claimed when the
claims are read in light of the Specification or why the claimed subject
matter is amenable to multiple plausible constructions.
Therefore, we conclude that Appellant has shown that the Examiner
erred in this rejection.

Claim limitation: without changing or without modifying
The Examiner rejected claims 33, 60-61, 64-65, and 70, which recite
the limitation of "without changing" or "without modifying" the symbolic
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date representations in the database during the reformatting, because "the
specification is devoid of any disclosure of how such reformatting is
performed 'without changing' or 'without modifying' the symbolic date
representation" and "the suggestion of reformatting without changing
representation is on its face a contradiction, for the reformat is to change
representation." (OA 6-7; see also Ans. 5-6.) We do not agree.
Instead, we agree with Appellant that there is adequate written
description support and an enabling disclosure in the original Specification.
(Dec. Response 58-59; App. Br. 11; Reply Br. 3-4; see also FF 1, 48.) As
Appellant explains, modification/reformatting is performed on data extracted
from the database, but the modification/reformatting is done without
modifying/reformatting the original data stored in the database. (Id.)
Appellant further notes that this issue "was dealt with in the prosecution of
the original ['574] application."19 (Dec. Response 59.) One of ordinary skill
in the art would have understood that Appellant had possession of the
claimed subject matter as of the filing date of the '063 patent. In addition,
we agree with Appellant (id.) that the disclosure of the original Specification
would enable one of ordinary skill in the art to perform the claimed
modifying/reformatting without undue experimentation. Furthermore, the
Examiner has not adequately explained why those skilled in the art would
not understand what is claimed when the claims are read in light of the

19 For example, the statement of reasons for allowance on page 2 of the
Notice of Allowability mailed April 3, 1998 stated that the claims
"determine a pair of century digits to be used for computation, but without
enlarging the number of date digits of the database."
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90/006,541 (merged)
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Specification or why the claimed subject matter is amenable to multiple
plausible constructions.
Therefore, we conclude that Appellant has shown that the Examiner
erred in this rejection.

Claim limitation: pivot date or pivot year
The Examiner rejected claims 16-30, 32, 34-67, 69-71, 75, and 76,
which recite the limitation of a pivot date or pivot year, because "such terms
are nowhere defined or even mentioned in the original specification."
(OA 7; see also Ans. 6.) We do not agree.
Instead, we agree with Appellant that there is adequate written
description support and an enabling disclosure in the original Specification.
(Dec. Response 59-60; App. Br. 11; Reply Br. 4; see also FF 3-7, 49.)
Claims 16-30, 32, 66, 67, 69, 75, and 76 recite that the "pivot date" or "pivot
year" is a YAYB value with "YAYB being no later than the earliest Y1Y2 year
designator in the database." Claims 34-65 recite that the "pivot date" or
"pivot year" is "represented by one of the symbolic representations of the
dates as stored in the at least one date field of the database." Claims 70 and
71 recite that the "pivot date" or "pivot year" is "less than or equal to the
earliest date represented by the [in claim 70, or "a," in claim 71] symbolic
representation of dates stored in the at least one date field."
Although the Specification does not use the term "pivot date" or
"pivot year," it does contain an equivalent description of the claimed subject
matter. (FF 4-6.) The Specification teaches that YAYB is the first year of the
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10-decade window (FF 5) and original claim 1 of the '574 application recited
that YAYB is "no later than the earliest Y1Y2 year designator in the database."
One of ordinary skill in the art would have understood that Appellant had
possession of the claimed subject matter as of the filing date of the '063
patent. In addition, we agree with Appellant that the disclosure of the '063
patent would enable one of ordinary skill in the art to use the claimed
invention without undue experimentation. Furthermore, the Examiner has
not adequately explained why those skilled in the art would not understand
what is claimed when the claims are read in light of the Specification or why
the claimed subject matter is amenable to multiple plausible constructions.
Therefore, we conclude that Appellant has shown that the Examiner
erred in this rejection.

Claim limitation: reformatting or storing separately
The Examiner rejected claims 20-21, 62-65, and 71, which recite the
limitation of reformatting or storing separately from the symbolic
representations in the database, because "the original specification does not
disclose such 'separate' reformatting or storing." (OA 7; see also Ans. 6.)
We do not agree.
Instead, we agree with Appellant that there is adequate written
description support and an enabling disclosure in the original Specification.
(Dec. Response 60; App. Br. 11; Reply Br. 4; see also FF 1, 50.) Appellant
further notes that this issue "was raised and dealt with by the Examiner in
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the original prosecution of the Dickens patent [i.e., the '574 application]."20
(Dec. Response 60.) One of ordinary skill in the art would have understood
that Appellant had possession of the claimed subject matter as of the filing
date of the '063 patent. In addition, we agree with Appellant that the
disclosure of the '063 patent would enable one of ordinary skill in the art to
make and use the claimed invention without undue experimentation.
Furthermore, the Examiner has not adequately explained why those skilled
in the art would not understand what is claimed when the claims are read in
light of the Specification or why the claimed subject matter is amenable to
multiple plausible constructions.
Therefore, we conclude that Appellant has shown that the Examiner
erred in this rejection.

Claim limitation: "collectively" further processing
The Examiner rejected claims 16-25, 26-30,21 31-33, 66, 67, and 72,
which recite the limitation of "collectively further processing." (OA 7-8; see

20 For example, the statement of reasons for allowance on page 2 of the
Notice of Allowability mailed April 3, 1998 stated that the claims
"determine a pair of century digits to be used for computation, but without
enlarging the number of date digits of the database."
21 The Examiner's explanation of the rejection in the office action (OA 7)
appears to have mistakenly omitted claims 26-30, which recite "collectively
further processing." However, claims 26-30 were included in the Examiner's
rejections under 35 U.S.C. § 112, first and second paragraphs, in the office
action (OA 5), the final office action (FA 3), and the Answer (Ans. 3, 6).
Therefore, we consider the omission of claims 26-30 at page 7 of the office
action to be a typographical error.
Appeal 2008-4652
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90/006,541 (merged)
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also Ans. 6.) The Examiner also rejected claims 36-43 and 48-55,22 which
recite the limitations of either "collectively sorting" or "collectively
manipulating." (OA 7-8; see also Ans. 6.) In addition, the Examiner
rejected claims 34-59 and 61,23 63 and 65, which recite "running a program
collectively." We agree with the Examiner.
Appellant argues that the Examiner erred. (Dec. Response 60-61;
App. Br. 11; Reply Br. 4; see also FF 51.) In particular, Appellant argues
that "[t]he original disclosure and claims disclose a process whereby 'each'
or 'all' of the dates stored in the database, e.g., a legacy database, wherein the
stored format includes only two year date characters, are reformatted to
contain four year date characters, followed by a process of, e.g., sorting or
manipulating, based on all of the reformatted dates." (Dec. Response 61;
FF 51) Appellant asserts that "Exhibit A[] further supports these claims."
(App. Br. 11; see also Reply Br. 4; Dec. Response 61; FF 51.) Appellant
admits that "[t]he term 'collectively' is not used in the original disclosure."
(Id.) Nevertheless, Appellant argues that "the term serves to define over the
art, e.g., Shaughnessy, where, e.g., one date from the database and one fixed

22 The Examiner's explanation of the rejection in the office action (OA 7)
appears to have mistakenly omitted claims 48-55, which recite "collectively
sorting" or "collectively manipulating." However, claims 48-55 were
included in the Examiner's rejections under 35 U.S.C. § 112, first and second
paragraphs, in the office action (OA 5), the final office action (FA 3), and
the Answer (Ans. 3, 6). Therefore, we consider the omission of claims 48-
55 at page 7 of the office action to be a typographical error.
23 The office action (OA 7) also included claim 60, but claim 60 does not
recite "running a program collectively." Therefore, we consider the
inclusion of claim 60 here to be a typographical error.
Appeal 2008-4652
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90/006,541 (merged)
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date, or two dates from the database, are compared to each other, in the
called subroutine, as opposed to all of the data from the database being
manipulated, e.g., date sorted 'collectively.'" (Id.)
Appellant's arguments are not persuasive. The term "collectively" is
quite broad, contrary to the narrow interpretation urged by Appellant. The
Specification does not attribute any special meaning to this term because, as
Appellant admits (Dec. Response 61; see also FF 51), the term "collectively"
is not used in the original disclosure. The relevant plain meaning of
"collectively" is "in a collective sense or manner: . . . in the aggregate: by
collective acts." (FF 59.) The relevant plain meaning of "collective" is
"formed by collecting : gathered into a mass, sum, or body :
AGGREGATED" (FF 60) or "formed by collecting; gathered into a whole"
(FF 60). Therefore, under the broadest reasonable interpretation consistent
with the Specification, "collectively" performing the acts of "further
processing," "sorting," "manipulating," or "running a program" can be
interpreted as performing these acts in a collective manner.
Appellant has not presented any convincing evidence that
demonstrates that, as of the filing date of the '574 application, the inventor
had possession of the claimed subject matter, i.e., "collectively" performing
the acts of "further processing," "sorting," "manipulating," or "running a
program." Neither the Toreson Declaration nor the Winner Declaration
convincingly explain or otherwise demonstrate how one of ordinary skill in
the art would have understood that the inventor had possession of the
properly interpreted subject matter as of the filing date of the '574
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application. (See FF 51.) At best, these Declarations merely offer
unadorned conclusions. In addition, Appellant has not convincingly
explained or otherwise demonstrated how Exhibit A provides support to
show that one of ordinary skill in the art would have understood that the
inventor had possession of the properly interpreted subject matter as of the
filing date of the '574 application. (See FF 51.) Instead, Appellant merely
presents an unsupported conclusion. While the Specification describes
sorting or otherwise manipulating date information after reformatting (FF 8),
Appellant has not pointed to a description in the Specification of
"collectively" further processing, sorting, manipulating, or running a
program as claimed. Thus, Appellant has not shown that the Examiner erred
in finding that one of ordinary skill in the art would not have recognized that
Appellant had possession of the claimed subject matter as of the filing date
of the '063 patent.
Appellant also has not presented any convincing evidence that
demonstrates that the Specification enables one of ordinary skill in the art to
make and use the claimed invention. As discussed, Appellant's evidence and
arguments are conclusory at best.
In addition, the meaning of "collectively" further processing, sorting,
manipulating, and running a program is unclear. In other words, one of
ordinary skill in the art would not understand what is claimed when these
claims are read in light of the Specification. Therefore, these claims are
indefinite because they do not give adequate notice of the boundaries of
protection involved.
Appeal 2008-4652
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90/006,541 (merged)
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Moreover, these claims are indefinite because the above-noted claim
terms are subject to multiple plausible interpretations, and the Specification
does not reasonably apprise one skilled in the relevant art which
interpretation controls. Appellant proffers one possible interpretation (Dec.
Response 61; see also FF 51). Specifically, Appellant interprets
"collectively" manipulating (e.g., date sorting) as manipulating all of the
data from the database. (Id.) However, another plausible interpretation of
the claim limitations of "collectively" performing the acts of "further
processing," "sorting," "manipulating," or "running a program" would
require the acts themselves to be performed in a collective manner or in the
aggregate.
For example, under one plausible interpretation, "collectively further
processing" the reformatted symbolic representations of each of the
symbolic representations of each of the dates, as recited by claim 16, could
be interpreted as requiring the reformatted symbolic representations to be
processed in a collective manner or in the aggregate. In other words, the
reformatted symbolic representations themselves may be required to be
formed by collecting or being gathered into a whole. Alternatively, under
another plausible interpretation, "collectively further processing" could be
interpreted to require that the act of "further processing" be performed in a
collective manner or in the aggregate. Similarly, the limitations of
collectively sorting, manipulating, and running a program are subject to
multiple plausible interpretations.
Appeal 2008-4652
Reexamination Control Nos. 90/005,727; 90/005,592; 90/005,628; and
90/006,541 (merged)
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Accordingly, we conclude that Appellant has not shown that the
Examiner erred in rejecting claims 16-25, 26-30, 31-33, 66-67, and 72,
claims 36-43 and 48-55, and claims 32-59, 61, 63, and 65 under 35 U.S.C.
§ 112, first and second paragraphs.
We do not believe that our conclusion with respect to claims 26-30,
which recite "collectively further processing," and claims 48-55, which
recite "collectively sorting" or "collectively manipulating," need be treated
as a new ground of rejection. As discussed, the Examiner has rejected
claims 26-30 and 48-55 under 35 U.S.C. § 112, first and second paragraphs
(OA 5; FA 3; Ans. 3,6). For the reasons previously discussed, the Examiner
has shown why the limitations "collectively further processing,"
"collectively sorting," and "collectively manipulating" lack written
description support, are not enabled, and are indefinite.
Moreover, Appellant is not prejudiced by our conclusion that no error
has been shown in the rejection of claims 26-30 and 48-55 under 35 U.S.C.
§ 112, first and second paragraphs. Appellant has presented arguments,
which we have fully considered, as to why claims which recite the
limitations "collectively further processing," "collectively sorting," and
"collectively manipulating" allegedly do not lack written description
support, are enabled, and are not indefinite.
However, if Appellant believes that our conclusion that no error has
been shown in the rejection of claims 26-30 and 48-55 under 35 U.S.C.
§ 112, first and second paragraphs, constitutes a new ground of rejection
under 37 C.F.R. § 41.50(b), Appellant may treat it as such. Thus, Appellant
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may choose to treat our affirmance of the rejection of claims 26-30 and
48-55 under 35 U.S.C. § 112, first and second paragraphs, as a new ground
of rejection. 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 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 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 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 …

Claim limitation: running a program after sorting
The Examiner rejected claims 36, 37, 40, 41, 48, 49, 51-5, and 69,
which recite the limitation of running a program after performing a sorting
operation, because "the original specification does not provide a written
description of such running of a program subsequent to the step of sorting."
(OA 8; see also Ans. 6.) Similarly, the Examiner rejected claims 38, 39, and
42, and 43, which recite data manipulation before running the program. (OA
8; see also Ans. 6.) We do not agree.
Instead, we agree with Appellant that there is adequate written
description support and an enabling disclosure in the original Specification.
Appeal 2008-4652
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90/006,541 (merged)
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(Dec. Response 61-62; App. Br. 11; Reply Br. 4; see also FF 7, 52.) One of
ordinary skill in the art would have understood that Appellant had
possession of the claimed subject matter as of the filing date of the '063
patent. In addition, we agree with Appellant that the disclosure of the '063
patent would enable one of ordinary skill in the art to make and use the
claimed invention without undue experimentation. Furthermore, the
Examiner has not adequately explained why those skilled in the art would
not understand what is claimed when the claims are read in light of the
Specification or why the claimed subject matter is amenable to multiple
plausible constructions.
Therefore, we conclude that Appellant has shown that the Examiner
erred in this rejection.

Claim limitation: converting at least a substantial portion
The Examiner rejected claims 46-59, which recite the limitation of
repeating the step of converting at least a substantial portion of the specified
data, because "[t]he original specification does not disclose the conversion
of such substantial portion." (OA 8; see also Ans. 6.) We do not agree.
Instead, we agree with Appellant that there is adequate written
description support and an enabling disclosure in the original Specification.
(Dec. Response 62; App. Br. 11; Reply Br. 4; see also FF 53.) One of
ordinary skill in the art would have understood that Appellant had
possession of the claimed subject matter as of the filing date of the '063
patent. (Id.) In addition, we agree with Appellant that the disclosure of the
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'063 patent would enable one of ordinary skill in the art to make and use the
claimed invention without undue experimentation. Furthermore, the
Examiner has not adequately explained why those skilled in the art would
not understand what is claimed when the claims are read in light of the
Specification or why the claimed subject matter is amenable to multiple
plausible constructions.
Therefore, we conclude that Appellant has shown that the Examiner
erred in this rejection.

Claim limitation: windowing
The Examiner rejected claims 34-65, 70, and 71, which recite the
limitation of converting symbolic representations by windowing the
symbolic representations against a pivot year, because "[t]he verb
'windowing' appears nowhere in the specification, and its meaning is
unclear." (OA 8; see also Ans. 6-7.) We agree with the Examiner.
Appellant argues that the Examiner erred. (Dec. Response 63; App.
Br. 11; Reply Br. 4; see also FF 54.) In particular, Appellant argues that
"[w]indowing is a well known and recognized term in the art" and "[e]ven if
the disclosure of the Dickens patent . . . does not specifically user the term
'windowing' . . . one skilled in the art at the time of the filing of the Dickens
patent would have understood the disclosure to contemplate and fully
describe and enable the claim limitation." (Dec. Response 63; FF 54.)
Appellant asserts that "Exhibit A[] further supports these claims." (App. Br.
11; see also Reply Br. 4; Dec. Response 63; FF 54.)
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Appellant's arguments are not persuasive. While Appellant argues
that the term "windowing" is well known in the art, Appellant does not
explain or present any convincing evidence, in either the Toreson
Declaration, the Winner Declaration, or elsewhere, to demonstrate what that
term would have been understood to mean. The Toreson Declaration,
Winner Declaration, and Appellant simply make the conclusory allegation
that, with or without Exhibit A, one skilled in the art "would have
understood the disclosure to contemplate and fully describe and enable the
claim limitation." (FF 54; Dec. Response 63.) There also is no explanation
as to how Exhibit A further supports Appellant's allegations. We agree with
the Examiner that the claims are indefinite because the scope of the term
"windowing" is unclear. Importantly, it is not clear which method steps
and/or techniques are encompassed or required by the term "windowing" as
used in the claims.
Although the Specification discloses a particular technique for
converting symbolic date representations that uses a ten-decade window
(FF 1, 4-7), we will not read such limitations from the Specification into the
claims. JVW Enters., Inc. v. Interact Accessories, Inc. 424 F.3d 1324, 1335
(Fed. Cir. 2005) ("We do not import limitations into claims from examples
or embodiments appearing only in a patent's written description, even when
a specification describes very specific embodiments of the invention or even
describes only a single embodiment, unless the specification makes clear
that 'the patentee . . . intends for the claims and the embodiments in the
specification to be strictly coextensive.'"). Here, the Specification does not
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make clear that the patentee intends the claims and the embodiments
disclosed in the Specification to be coextensive. Among other things, the
Specification states that "[a]lthough a particular embodiment of the
invention has been described in detail for purposes of illustration, various
modifications and enhancements may be made without departing from the
spirit and scope of the invention. Accordingly, the invention is not to be
limited except as by the appended claims." ('063 patent, col. 3, l. 65 to
col. 4, l. 3.)
Furthermore, these claims are indefinite because the term
"windowing" is subject to multiple possible interpretations, and the
Specification does not reasonably apprise one skilled in the relevant art
which interpretation controls. For example, Shaughnessy teaches an
application of windowing (see Reply Br. 8). The approach of Shaughnessy
employs multiple steps including determining the current date, determining
the end of the 100 year cycle, determining the two possible century values,
assigning a century value, and performing the requested date operation. (FF
13, 15-25.) Thus, one plausible interpretation could interpret "windowing"
to include all of these steps. Alternatively, another plausible interpretation
could interpret "windowing" to include various subsets of these steps or,
perhaps, entirely different steps.
As another example, "windowing," as evidenced by the approach of
Shaughnessy, plausibly could be construed as a technique where an end date
of the 100 year cycle is compared to the date of interest so that one century
value is assigned if the date is less than or equal to the end of the 100 year
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cycle date and other century value is assigned if the date is greater than the
end of the 100 year cycle date. (FF 22.) But as evidenced by the approach
of Hazama and Ohms, "windowing" also plausibly could be construed as a
technique where a starting point of the 100 year range is compared with the
date of interest such that one century value is assigned if the date is greater
than or equal to the starting point and another century value is assigned if
the date is less than the starting point. (FF 28, 45.)
Thus, there are multiple plausible constructions for the claim term
"windowing."
In addition to not explaining or presenting convincing evidence to
show what the claim term "windowing" means, Appellant has not presented
any convincing evidence that demonstrates that, as of the filing date of the
'574 application, the inventor had possession of the claimed subject matter,
i.e., "windowing" the symbolic representations. Nor has Appellant
presented any convincing evidence that demonstrates that the Specification
enables one of ordinary skill in the art to make and use the claimed
invention.
Accordingly, we conclude that Appellant has not shown that the
Examiner erred in rejecting claims 34-65, 70, and 71 under 35 U.S.C. § 112,
first and second paragraphs.

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Claim limitation: opening the database
The Examiner rejected claims 35, 37, 39, 41, 43, 45, 47,24 49, 51, 53,
55, 57, and 59, which recite the limitation of opening a database prior to the
converting step, because "the original specification makes no mention of
opening the database." (OA 9; see also Ans. 7.) We do not agree.
Instead, we agree with Appellant that there is adequate written
description support and an enabling disclosure in the original Specification.
(Dec. Response 63-64; App. Br. 11; Reply Br. 4; see also FF 55.) One of
ordinary skill in the art would have understood that Appellant had
possession of the claimed subject matter as of the filing date of the '063
patent. In addition, we agree with Appellant (id.) that the disclosure of the
'063 patent would enable one of ordinary skill in the art to make and use the
claimed invention without undue experimentation. Furthermore, the
Examiner has not adequately explained why those skilled in the art would
not understand what is claimed when the claims are read in light of the
Specification or why the claimed subject matter is amenable to multiple
plausible constructions.
Therefore, we conclude that Appellant has shown that the Examiner
erred in this rejection.

24 The Examiner's explanation of the rejection in the office action (OA 9)
mistakenly omitted claim 47, which depends from claim 35. However,
claim 47 was included in the Examiner's rejections under 35 U.S.C. § 112,
first and second paragraphs, in the office action (OA 5), the final office
action (FA 3), and the Answer (Ans. 3, 7). Therefore, we consider the
omission of claim 47 at page 9 of the office action to be a typographical
error.
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Claim limitation: avoiding an ambiguity by reformatting or converting
The Examiner rejected claims 34-65, 70, and 71, which recite the
limitation of reformatting or converting so as not to create an ambiguity,
because "[t]he original specification merely suggests that dates containing
only two digit year representation, and without reformatting, may sort
improperly. It does not mention or discuss any such claimed ambiguity."
(OA 9; see also Ans. 7.) We do not agree.
Instead, we agree with Appellant that there is adequate written
description support and an enabling disclosure in the original Specification.
(Dec. Response 64; App. Br. 11; Reply Br. 4; see also FF 2-6, 56.) One of
ordinary skill in the art would have understood that Appellant had
possession of the claimed subject matter as of the filing date of the '063
patent. In addition, we agree with Appellant (id.) that the disclosure of the
'063 patent would enable one of ordinary skill in the art to make and use the
claimed invention without undue experimentation. Furthermore, the
Examiner has not adequately explained why those skilled in the art would
not understand what is claimed when the claims are read in light of the
Specification or why the claimed subject matter is amenable to multiple
plausible constructions.
Therefore, we conclude that Appellant has shown that the Examiner
erred in this rejection.

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Claim limitation: selecting a YAYB value for the first decade
The Examiner rejected claims 1-15, 31, 33, 68, and 72-74, which
recite the limitation of selecting a YAYB value for the first decade of a
window, because "[t]here is no known meaning for the 'value of a decade.'"
(OA 9; see also Ans. 7.) Even though "this subject matter was in the
original disclosure," the claims were rejected under 35 U.S.C. § 112, second
paragraph, "because the meaning of the claims phraseology is so devoid as
to be wholly indefinite." (OA 9; see also Ans. 7.) We do not agree.
Instead, we agree with Appellant that there is adequate written
description support and an enabling disclosure in the original Specification.
(Dec. Response 65; App. Br. 11; Reply Br. 5; see also FF 4-6, 57.) One of
ordinary skill in the art would have understood that Appellant had
possession of the claimed subject matter as of the filing date of the '063
patent. In addition, we agree with Appellant (id.) that the disclosure of the
'063 patent would enable one of ordinary skill in the art to make and use the
claimed invention without undue experimentation. Furthermore, the
Examiner has not adequately explained why those skilled in the art would
not understand what is claimed when the claims are read in light of the
Specification or why the claimed subject matter is amenable to multiple
plausible constructions.
Therefore, we conclude that Appellant has shown that the Examiner
erred in this rejection.

Appeal 2008-4652
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§ 103(a) Rejections
Appellant argues that the Examiner erred in rejecting claims 1-76
under 35 U.S.C. § 103(a) as being obvious over various combinations of
Shaughnessy, Hazama, and Booth and as being obvious over various
combinations of Ohms, Hazama, and Booth. (App. Br. 11-29; Reply
Br. 5-11; Feb. Response 5-38; Dec. Response 29-54, 65-86.) The issues
presented are:
1. Has Appellant shown that the Examiner erred in rejecting claims
1-76 under 35 U.S.C. § 103(a) as being obvious over various combinations
of Shaughnessy, Hazama, and Booth?
2. Has Appellant shown that the Examiner erred in rejecting claims
1-76 under 35 U.S.C. § 103(a) as being obvious over various combinations
of Ohms, Hazama, and Booth?
For reasons discussed below, we find that Appellant has not shown
that the Examiner erred in rejecting:
1. Claims 1-15, 68, 69, and 73-76 as being obvious under 35 U.S.C.
§ 103(a) in view of various combinations of Shaughnessy, Hazama, and
Booth; and
2. Claims 1-15, 68, 69, and 73-76 as being obvious under 35 U.S.C.
§ 103(a) in view of various combinations of Ohms, Hazama, and Booth.
However, for reasons discussed below, we vacate the rejection of
claims 16-67 and 70-72 for obviousness under 35 U.S.C. § 103(a) because,
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as discussed above, these claims are indefinite under 35 U.S.C. § 112,
second paragraph.

Claims 1-3, 5, 7, 9, and 10
Claims 1-3, 5, 7, 9 and 10 stand rejected under 35 U.S.C. § 103(a) as
being obvious over Shaughnessy and Hazama (FA 3; OA 10-16) and as
being obvious over Ohms and Hazama (FA 9; OA 107-111).
Claims 1-3: Shaughnessy / Hazama
Regarding claim 1, Appellant argues25 that Shaughnessy and Hazama
do not teach or suggest:26
(1) "selecting a 10-decade window with a YA YB value for the first
decade of the window, YA YB being no later than the earliest Y1 Y2 year
designator in the database." (Feb. Response 13; see also Dec. Response
65-66.) Instead, according to Appellant, "[t]he Shaughnessy method selects
a 10-decade window utilizing the 'date the system was installed.'" (Feb.
Response 13; see also Dec. Response 65-66.) Appellant also argues that
Shaughnessy does not disclose "all of the symbolic representations of dates
falling within a 10 decade period of time" (Dec. Response 35), as claimed

25 See generally App. Br. 11-12; Reply Br. 6-11.
26 Although Appellant also argued that Booth does not teach these
limitations (Feb. Response 19-21; Dec. Response 77-79), the Examiner
correctly pointed out (Office Action of July 22, 2002 at 208-209) that Booth
was not relied upon to teach these limitations and therefore Appellant's
arguments are not germane.
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because Shaughnessy discloses "data bases where the data contained could
include a span of over 100 years." (Dec. Response 35.);
(2) "determining a century designator C1 C2 for each symbolic
representation of a date in the database." (Feb. Response 13, 15; see also
Dec. Response 36, 67-71.) According to Appellant, this limitation is not
taught or suggested because "[t]he teaching of Shaughnessy [or Shaughnessy
in view of Hazama] is to determine a century designator for at most two date
data representations being processed in a called subroutine at any given
time" (Feb. Response 13; see also Feb. Response 15, Dec. Response 36,
67-71), and thus not for "each symbolic representation of a date in the
database" (Dec. Response 36). Appellant contends that the combination of
Shaughnessy and Hazama "does not 'teach or suggest the determination of a
century designator for each date in the database.'" (Dec. Response 68
(emphasis added).); and
(3) "reformatting the symbolic representation of the date with the
values C1 C2, Y1 Y2, M1 M2, and D1 D2 to facilitate further processing of the
dates." (Feb. Response 13; see also Feb. Response 15, Dec. Response
36-37, 72-74.) According to Appellant, this limitation is not taught or
suggested because "[t]he teaching of Shaughnessy [or Shaughnessy in view
of Hazama] is to reformat two dates at a time in the called subroutine and the
return to the program from the called subroutine of an indicator of the result
of the processing of the two reformatted date data entries. Shaughnessy [or
Shaughnessy in view of Hazama] does not teach facilitating 'further
processing of the dates' by 'reformatting the symbolic representation of the
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date . . . . for each symbolic representation of a date in the database.'" (Feb.
Response 13, 15; see also Dec. Response 36-37, 72-74.)
In addition, Appellant argues that the Examiner has not presented
sufficient evidence to combine the teachings of Shaughnessy and Hazama
(Dec. Response 38), that "Shaughnessy actually teaches away" (Dec.
Response 38), "[t]he method of operation and/or the theory of operations
[sic] of Shaughnessy, or Hazama would respectively have to be changed to
be combined with one another" (Dec. Response 38), and that the Examiner
used an improper hindsight reconstruction (Dec. Response 69).

Appellant's arguments present the following issue:

Has Appellant shown that the Examiner erred in rejecting claims 1-3
under 35 U.S.C. § 103(a) as being obvious over Shaughnessy and Hazama?

The resolution of this issue turns on the following subsidiary issues:

1. Has Appellant shown that the Examiner erred in finding that
Shaughnessy and Hazama teach or suggest "selecting a 10-decade window
with a YA YB value for the first decade of the window, YA YB being no later
than the earliest Y1 Y2 year designator in the database"?

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2. Has Appellant shown that the Examiner erred in finding that
Shaughnessy and Hazama teach or suggest "determining a century
designator C1 C2 for each symbolic representation of a date in the database"?

3. Has Appellant shown that the Examiner erred in finding that
Shaughnessy and Hazama teach or suggest "reformatting the symbolic
representation of the date with the values C1 C2, Y1 Y2, M1 M2, and D1 D2 to
facilitate further processing of the dates"?

4. Has Appellant shown that the Examiner erred by improperly
combining the applied references?

Appellant's arguments that the Examiner erred in rejecting claim 1 as
being obvious over Shaughnessy and Hazama are not persuasive.
Regarding the first subsidiary issue, the Examiner correctly found that
the combination of Shaughnessy and Hazama teaches "selecting a 10-decade
window with a YA YB value for the first decade of the window, YA YB being
no later than the earliest Y1 Y2 year designator in the database," as claimed.
(Ans. 12; OA 11-14; FF 15, 18, 28.)
In particular, Figure 4 of Shaughnessy teaches selecting a 10-decade
window. (FF 18; Ans. 12.) Appellant argues that Shaughnessy selects a
10-decade window by using the system install date. However, this argument
misses the mark. Figure 4 of Shaughnessy teaches the selection of the
10-decade window by teaching steps to determine the end of a 100 year
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cycle. (FF 18.) In other words, Shaughnessy determines the end of the 100
year cycle, which necessarily determines the beginning of the 100 year cycle
as well. Various parameters are specified to determine the end of the 100
year cycle, including the number of years of future dating required. (FF 18.)
In the method of Figure 4, a starting date is set to either the current date (as
determined in part by the system install date (FF 17)), the system install
date, or a default date. (FF 18.) "Next, the end of the 100 year cycle is
determined by adding the number of years of future dating required to the
starting date." (FF 18.) It is important to note that this "starting date,"
which may be based upon the system install date, is not the starting date of
the 100 year cycle. Rather, it is a starting date used to calculate the end of
the 100 year cycle when the parameter describing the number of years of
future dating required is added to it. Once the end of the 100 year cycle is
determined, the beginning of the 100 year cycle is necessarily determined as
well.
Although Shaughnessy does not explicitly teach that the starting year
for the window is selected to be less than any date in the database,27 we
agree with the Examiner that this would have been a matter of common
sense for one of ordinary skill in the art, as evidenced by Hazama, and, in
any event, this limitation is explicitly taught by Hazama. (Ans. 12; OA 10-
14; FF 28.) As pointed out by the Examiner, "Shaughnessy cannot operate

27 Or, to use the wording of the claim, Shaughnessy does not explicitly
teach that the YA YB value for the first decade of the window is no later than
the earliest Y1 Y2 year designator in the database.
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correctly unless the pivot date is less than any date in the database" because
otherwise "any dates in the database that were less than the pivot date would
be incorrectly altered to a date in the succeeding century." (OA 11.) In
addition, "one of ordinary skill in the art of programming would know and
would be adept at setting parameters to correctly process a set of data."
(OA 11.) In Shaughnessy, one of ordinary skill in the art would know to set
the parameters, including the required number of years of future dating (see
FF 18), to yield an end of 100 year cycle date that results in a beginning date
for the 100 year cycle that is less than any other year in the database. This is
no more than common sense. If it were otherwise, then Shaughnessy would
not work properly and would return incorrect results.
In addition, Hazama explicitly teaches that it was known to select the
starting year for the 10-decade window to be less than any date in the
database. (FF 28.) To select the starting year for the 10-decade window in
Shaughnessy to be less than any other year in the database, as taught by
Hazama, would be no more than the combination of familiar elements
according to known methods with no unpredictable results. Appellant has
not presented any credible evidence that using this technique taught by
Hazama in the method of Shaughnessy would be beyond the level of
ordinary skill in the art. In other words, Appellant has not shown that this
would have been "uniquely challenging or difficult for one of ordinary skill
in the art" or that it "represented an unobvious step over the prior art."
Leapfrog Enters. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)
(citing KSR, 127 S. Ct. at 1740-41). Further, Appellant has not presented
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credible evidence of secondary considerations of nonobviousness to rebut
the Examiner's prima facie case. Cf. Muniauction, Inc. v. Thomson Corp.,
532 F.3d 1218, 1327 (Fed. Cir. 2008) (finding evidence of secondary factors
either lacked nexus to claims or relationship "simply too attenuated to
overcome the strong prima facie demonstration . . . that the claims are
obvious.").
Appellant's argument that Shaughnessy does not disclose all dates in
the database falling within a 10 decade period of time is not convincing. As
the Examiner pointed out, Shaughnessy "discloses the claimed all of the
symbolic representations of dates falling within a 10 decade period of time
as a date having a cycle or a range of 100 years (col. 18, Cycle/Range C1 =
THE DATE CYCLE IS 100 YEARS)." (OA 12.) While Appellant may be
correct that Shaughnessy could support other date spans of over 100 years,
this does not diminish Shaughnessy's teaching of a database that spans 100
years, as claimed. In addition, Hazama teaches a database where the dates
fall within a 10 decade period of time by teaching that "if there are data from
year 1999 in file (6), up to year 2098 can be handled." (FF 28.)
Accordingly, Appellant has not shown that the Examiner erred in
finding that Shaughnessy and Hazama teach or suggest "selecting a
10-decade window with a YA YB value for the first decade of the window,
YA YB being no later than the earliest Y1 Y2 year designator in the database."
Regarding the second subsidiary issue, the Examiner correctly found
that the combination of Shaughnessy and Hazama teaches "determining a
century designator C1 C2 for each symbolic representation of a date in the
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database," as claimed. (Ans. 12-14; OA 11-14; FF 15-24, 28.) In particular,
Shaughnessy teaches that "a century value can be assigned to a two digit
representation of the year based upon where the year falls in the current 100
year cycle." (FF 19.) Figures 6 and 7 of Shaughnessy "illustrate how this
century assignment is accomplished." (FF 17; see also FF 20-23.) Hazama
teaches this limitation as well. (FF 28; see also FF 26, 29.)
Appellant's argument regarding each date in the database is not
persuasive. Claim 1 recites "providing a database with symbolic
representations of dates stored therein." This language does not place any
restriction on the number of symbolic representations of dates stored in the
database except, perhaps, it may be argued that more than one symbolic
representation is implied by the use of the plural word "dates." Appellant
does not point to anything in the Specification or otherwise that requires us
to interpret claim 1 to preclude the database from having just two entries
stored therein. Therefore, Appellant's argument that Shaughnessy does not
determine a century designator for each date in the database because it
merely determines a century designator for at most two date representations
is not persuasive. Nothing precludes the database from having just two
representations. Therefore, Shaughnessy meets this claim limitation.
Accordingly, Appellant has not shown that the Examiner erred in
finding that Shaughnessy and Hazama teach or suggest "determining a
century designator C1 C2 for each symbolic representation of a date in the
database."
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Regarding the third subsidiary issue, the Examiner correctly found
that the combination of Shaughnessy and Hazama teaches "reformatting the
symbolic representation of the date with the values C1 C2, Y1 Y2, M1 M2, and
D1 D2 to facilitate further processing of the dates," as claimed. (Ans. 14;
OA 13; FF 13, 16-17, 20-21, 24-25.) In particular, as the Examiner found
(Ans. 14; OA 13), Shaughnessy teaches reformatting the symbolic
representation of the date to yield a CCYYMMDD date format and returning
a date field with the converted date to the subroutine and by returning a
parameter to the application program for use in further operations. (FF 13,
16-17, 20-21, 24-25.)
Appellant's argument regarding each date in the database is not
persuasive. As discussed supra, nothing precludes the database from having
just two representations. Therefore, Shaughnessy meets this claim
limitation.
Accordingly, Appellant has not shown that the Examiner erred in
finding that Shaughnessy and Hazama teach or suggest "reformatting the
symbolic representation of the date with the values C1 C2, Y1 Y2, M1 M2, and
D1 D2 to facilitate further processing of the dates."
Regarding the fourth subsidiary issue, the Examiner has articulated a
reason with rational underpinnings (OA 14, 11) as to why one of ordinary
skill in the art would combine the teachings of the applied references. In
particular, the Examiner found that one of ordinary skill in the art "having
read Shaughnessy would immediately see the need to determine which 100
year span to use" and "[t]his determination would have led the ordinary
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skilled artisan to the Hazama reference, which teaches the pivot date being
smaller than the smallest two digit date in the database having all the dates
within a 100 year period as a solution to restrict the selection of
Shaughnessy's window . . . ." (OA 14.) In addition, the Examiner stated that
"the Hazama reference is provided to demonstrate that, apart from being
logically necessary, this attribute of the pivot date being earlier than the
dates in the database was, in fact, known to those of ordinary skill in the art
at the time of the invention, and not a ground breaking discovery by the
applicant." (OA 11.) Appellant has not presented credible evidence to
demonstrate error in this rationale or to demonstrate that the Examiner used
improper hindsight. Appellant has not convincingly explained why
Shaughnessy teaches away or why Shaughnessy's method of operation
would need to be changed in order to incorporate the teachings of Hazama.
As discussed supra, the selection of the end of the 100 year cycle taught by
Shaughnessy necessarily results in a selection of the beginning of the 100
year cycle and one of ordinary skill in the art would be adept at selecting the
parameters to correctly process the data, as evidenced by Hazama.
Therefore, Appellant has not shown that the Examiner erred by
improperly combining the applied references.
Accordingly, we conclude that Appellant has not shown that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) as being
obvious over Shaughnessy and Hazama. Claims 2 and 3, which depend
from claim 1, were not argued separately (App. Br. 12; Feb. Response 14;
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Dec. Response 38-40) and fall together with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii).

Claims 1-3: Ohms / Hazama
With respect to claim 1, Appellant argues28 that Ohms does not teach
or suggest:
(1) "providing a database with symbolic representations of dates
stored therein according to a format wherein Ml M2 is the numerical month
designator, Dl D2 is the numerical day designator, and Y1 Y2 is the numerical
year designator, all of the symbolic representations of dates falling within a
10-decade period of time." (Feb. Response 22; see also Dec. Response
51-52, 82-83.) According to Appellant, "[u]nlike this recitation of claim 1,
Ohms teaches providing a database with the dates in a Lilian format." (Feb.
Response 22; see also Dec. Response 51-52, 82-83.)) Appellant contends
that Ohms "simply teaches storing dates in a database in Lilian format which
'handles processing across century years' and '[a]ccommodating end users'
who 'enter two digits for the year' by 'providing a conversion function' using
windowing for data entry." (Feb. Response 22.);
(2) "providing a database ... all of the symbolic representations of
dates falling within a 10-decade period of time." (Feb. Response 22; see
also Dec. Response 51-52, 82-83.) Instead, according to Appellant, "Ohms
teaches having data in the database in Lilian format, i.e., within a ninety-

28 See generally App. Br. 20; Reply Br. 6-11.
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nine million day window (seven chronological day date numbers starting at a
given date)." (Feb. Response 22; see also Dec. Response 51-52, 82-83.);
(3) "selecting a 10-decade window with a YA YB value for the first
decade of the window, YA YB being no later than the earliest Y1 Y2 year
designator in the database." (Feb. Response 22; see also Dec. Response 52,
83.) According to Appellant, "[a]t best Ohms teaches or suggests selecting a
YAYB based upon dates that are currently being input into the database."
(Feb. Response 22; see also Dec. Response 52, 83.);
(4) "determining a century designator C1 C2 for each symbolic
representation of a date in the database, C1 C2 having ... ; ...." (Feb.
Response 22-23; see also Dec. Response 84.) According to Appellant,
"Ohms teaches entering date data into the database to be converted into
Lilian format for storage and manipulation within the database. He does not
teach or suggest determining a century designator for data in the database.
Lilian format needs none." (Feb. Response 22-23; see also Dec.
Response 84.); and
(5) "reformatting the symbolic representation of the date with the
values C1 C2, Y1 Y2, M1 M2, and D1 D2 to facilitate further processing of the
dates." (Feb. Response 22-23; see also Dec. Response 84.) According to
Appellant, "Ohms teaches reformatting into Lilian format and thereafter
processing the date data in the database utilizing the Lilian format." (Feb.
Response 22-23; see also Dec. Response 84.)
Appellant also argues that "the addition of Hazama's disclosure of a
pivot date smaller than the smallest date in the database does not result in a
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prima facie showing of obviousness, because, at least, the above noted
elements of the claimed invention are not shown in Ohms." (Dec.
Response 52.)
In addition, Appellant argues that there is no motivation to combine
the applied references because Ohms is non-analogous art and teaches away
(Feb. Response 23; Dec. Response 52-53), the combination would render
Hazama inoperative for its intended purpose and would change the principle
of operation of Hazama (Dec. Response 53). Appellant further argues that
Booth "adds nothing to the combination of references that Ohms itself does
not contribute."29 (Dec. Response 54.)

Appellant's arguments present the following issue:

Has Appellant shown that the Examiner erred in rejecting claims 1-3
under 35 U.S.C. § 103(a) as being obvious over Ohms and Hazama?

The resolution of this issue turns on the following subsidiary issues:

1. Has Appellant shown that the Examiner erred in finding that Ohms
and Hazama teach or suggest "providing a database with symbolic
representations of dates stored therein according to a format wherein Ml M2
is the numerical month designator, Dl D2 is the numerical day designator,

29 Booth was not relied upon for this rejection and therefore Appellant's
arguments regarding Booth are not germane.
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and Y1 Y2 is the numerical year designator, all of the symbolic
representations of dates falling within a 10-decade period of time"?

2. Has Appellant shown that the Examiner erred in finding that Ohms
and Hazama teach or suggest "providing a database ... all of the symbolic
representations of dates falling within a 10-decade period of time"?

3. Has Appellant shown that the Examiner erred in finding that Ohms
and Hazama teach or suggest "selecting a 10-decade window with a YA YB
value for the first decade of the window, YA YB being no later than the
earliest Y1 Y2 year designator in the database"?

4. Has Appellant shown that the Examiner erred in finding that Ohms
and Hazama teach or suggest "determining a century designator C1 C2 for
each symbolic representation of a date in the database, C1 C2 having ..."?

5. Has Appellant shown that the Examiner erred in finding that Ohms
and Hazama teach or suggest "reformatting the symbolic representation of
the date with the values C1 C2, Y1 Y2, M1 M2, and D1 D2 to facilitate further
processing of the dates"?

6. Has Appellant shown that the Examiner erred by improperly
combining the applied references?

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Appellant's arguments that the Examiner erred in rejecting 1 as being
obvious over Ohms and Hazama are not persuasive.
Regarding the first subsidiary issue, the Examiner correctly found that
the combination of Ohms and Hazama teaches "providing a database with
symbolic representations of dates stored therein according to a format
wherein Ml M2 is the numerical month designator, Dl D2 is the numerical
day designator, and Y1 Y2 is the numerical year designator, all of the
symbolic representations of dates falling within a 10-decade period of time,"
as claimed. (Ans. 21-22; OA 107-108; FF 41-45.) In particular, Ohms
teaches a short Gregorian format (YYMMDD) and also teaches storing dates
in a database in a Gregorian format. (FF 41, 44-46.)
We further agree with the Examiner (Ans. 21-22) that Appellant has
misread the teachings of Ohms as being limited to dates in a Lilian format.
While the teachings of Ohms include dates in a Lilian format, they are not so
limited. The teachings of Ohms include and apply to dates in a Gregorian
format. (FF 41-44.)
Accordingly, Appellant has not shown that the Examiner erred in
finding that Ohms and Hazama teach or suggest "providing a database with
symbolic representations of dates stored therein according to a format
wherein Ml M2 is the numerical month designator, Dl D2 is the numerical
day designator, and Y1 Y2 is the numerical year designator, all of the
symbolic representations of dates falling within a 10-decade period of time."
Regarding the second subsidiary issue, the Examiner correctly found
that the combination of Ohms and Hazama teaches "providing a database ...
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all of the symbolic representations of dates falling within a 10-decade period
of time," as claimed. (Ans. 22; OA 108; FF 43, 45.) As discussed supra, the
teachings of Ohms are not limited to dates in a Lilian format and also
include dates in a Gregorian format.
Accordingly, Appellant has not shown that the Examiner erred in
finding that Ohms and Hazama teach or suggest "providing a database ... all
of the symbolic representations of dates falling within a 10-decade period of
time."
Regarding the third subsidiary issue, the Examiner correctly found
that the combination of Ohms and Hazama teaches "selecting a 10-decade
window with a YA YB value for the first decade of the window, YA YB being
no later than the earliest Y1 Y2 year designator in the database," as claimed.
(Ans. 22; OA 108-109; FF 28, 43, 45.) In particular, the Examiner found
that Ohms teaches "specifying a year as the desired starting point (pivot
date) of the 100 year window" (OA 108) and found that Hazama
complements Ohms by teaching "a pivot year date that is smaller than the
smallest two digit year date in the database." (Ans. 22; see also FF 28.) In
addition, the Examiner found that "[t]he ordinary skilled artisan having read
Ohms would immediately see the need to determine which 100 year span to
use" (OA 109) and would have been led to the "pivot date" selection
teaching of Hazama. Appellant has not presented convincing evidence or
argument to show error in the Examiner's findings and reasoning.
Accordingly, Appellant has not shown that the Examiner erred in
finding that Ohms and Hazama teach or suggest "selecting a 10-decade
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window with a YA YB value for the first decade of the window, YA YB being
no later than the earliest Y1 Y2 year designator in the database."
Regarding the fourth subsidiary issue, the Examiner correctly found
that the combination of Ohms and Hazama teaches "determining a century
designator C1 C2 for each symbolic representation of a date in the database,
C1 C2 having ...," as claimed. (Ans. 22-23; OA 108; FF 28, 43.) As
discussed supra, Appellant has misread the teachings of Ohms. We agree
with the Examiner that Ohms is not limited to teaching the converting of the
data into Lilian format for storage and manipulation in the database.
(Ans. 23.) Instead, Ohms discloses the recited determination of a century
designator by teaching or suggesting conversion of dates stored in a database
in Gregorian format from a short Gregorian format (six digits) without a
century designator (i.e., a two digit year) to a Gregorian format (eight digits)
that includes the century designator (i.e., a four digit year). (FF 43-45.)
Appellant has not presented convincing evidence or argument to show error
in the Examiner's findings or reasoning.
Accordingly, Appellant has not shown that the Examiner erred in
finding that Ohms and Hazama teach or suggest "determining a century
designator C1 C2 for each symbolic representation of a date in the database,
C1 C2 having ...."
Regarding the fifth subsidiary issue, the Examiner correctly found that
the combination of Ohms and Hazama teaches "reformatting the symbolic
representation of the date with the values C1 C2, Y1 Y2, M1 M2, and D1 D2 to
facilitate further processing of the dates," as claimed. (Ans. 23; OA 108;
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FF 42-44.) As discussed supra, Appellant has misread the teachings of
Ohms. We agree with the Examiner that Ohms is not limited to teaching
reformatting into Lilian format and processing the data in the database using
the Lilian format. (Ans. 23.) Instead, Ohms discloses the recited
determination of a century designator by teaching or suggesting conversion
of dates stored in a database in Gregorian format from a short Gregorian
format (six digits) without a century designator to a Gregorian format (eight
digits) that includes the century designator. (FF 43, 44.) Appellant has not
presented convincing evidence or argument to show error in the Examiner's
findings or reasoning.
Accordingly, Appellant has not shown that the Examiner erred in
finding that Ohms and Hazama teach or suggest "reformatting the symbolic
representation of the date with the values C1 C2, Y1 Y2, M1 M2, and D1 D2 to
facilitate further processing of the dates."
Regarding the sixth subsidiary issue, the Examiner has articulated a
reason with rational underpinnings (OA 108-109) as to why one of ordinary
skill in the art would combine the teachings of Ohms and Hazama. The
Examiner found that "[t]he ordinary skilled artisan having read Ohms would
immediately see the need to determine which 100 year span to use" (OA
109) and would have been led to the "pivot date" selection teaching of
Hazama (OA 109). Appellant has not presented credible evidence to
demonstrate error in this rationale or to demonstrate that the Examiner used
improper hindsight. Appellant has not convincingly explained why Ohms is
non-analogous art or teaches away because, as discussed, Ohms is not
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limited to teaching dates in a Lilian format. Appellant also has not
convincingly explained why the combination would render Hazama
inoperative for its intended purpose or why it would change the principle of
operation of Hazama.
Therefore, Appellant has not shown that the Examiner erred by
improperly combining the applied references.
Accordingly, we conclude that Appellant has not shown that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) as being
obvious over Ohms and Hazama. Claims 2 and 3, which depend from
claim 1, were not argued separately (App. Br. 12; Feb. Response 24; Dec.
Response 51-54) and fall together with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii).

Claim 5: Shaughnessy / Hazama
With respect to claim 5, Appellant argues30 that there is no teaching or
suggestion in Shaughnessy or Shaughnessy in view of Hazama of
"reformatting each symbolic representation of a date into the format C1 C2
Y1 Y2 M1 M2 D1 D2." (Feb. Response 14; see also Feb. Response 16, Dec.
Response 39, 75.)
However, we agree with the Examiner (Ans. 15; OA 14-15; see also
FF 13, 16-17, 20-21, 24-25) that Shaughnessy teaches or suggests the
disputed limitation of dependent claim 5. Appellant has not made any effort
to show error in the Examiner's findings and reasoning. Therefore, we

30 See generally App. Br. 11-12; Reply Br. 6-11.
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affirm the rejection of dependent claim 5 for the reasons stated by the
Examiner.

Claim 5: Ohms / Hazama
With respect to claim 5, Appellant argues31 that there is no teaching or
suggestion in Ohms of "reformatting each symbolic representation of a date
into the format C1 C2 Y1 Y2 M1 M2 D1 D2." (Feb. Response 23; see also Dec.
Response 51-54.)
However, we agree with the Examiner (Ans. 23-24; OA 110; see also
FF 43-44) that Ohms teaches or suggests the disputed limitations of
dependent claim 5. Appellant has not made any effort to show error in the
Examiner's findings and reasoning. Therefore, we affirm the rejection of
dependent claim 5 for the reasons stated by the Examiner.

Claim 7: Shaughnessy / Hazama
With respect to claim 7, Appellant argues32 that there is no teaching or
suggestion in Shaughnessy or Shaughnessy in view of Hazama of
"converting pre-existing date information[within a database] having a
different format into the format wherein M1 M2 is the numerical month
designator, D1 D2 is the numerical day designator and Y1 Y2 is the numerical
year designator." (Feb. Response 14; see also Feb. Response 16, Dec.
Response 39, 75.)

31 See generally App. Br. 20-21; Reply Br. 6-11.
32 See generally App. Br. 11-12; Reply Br. 6-11.
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However, we agree with the Examiner (Ans. 16; OA 15; FF 22-24)
that Shaughnessy teaches or suggests the disputed limitation of dependent
claim 7. Appellant has not made any effort to show error in the Examiner's
findings and reasoning. Therefore, we affirm the rejection of dependent
claim 7 for the reasons stated by the Examiner.

Claim 7: Ohms / Hazama
With respect to claim 7, Appellant argues33 that there is no teaching or
suggestion in Ohms of "converting pre-existing date information having a
different format into the format wherein M1 M2 is the numerical month
designator, D1 D2 is the numerical day designator and Y1 Y2 is the numerical
year designator." (Feb. Response 23-24; see also Dec. Response 51-54.)
However, we agree with the Examiner (Ans. 24; OA 110; see also
FF 43, 44) that Ohms teaches or suggests the disputed limitations of
dependent claim 7. Appellant has not made any effort to show error in the
Examiner's findings and reasoning. Therefore, we affirm the rejection of
dependent claim 7 for the reasons stated by the Examiner.

Claim 9: Shaughnessy / Hazama
With respect to claim 9, Appellant argues34 that there is no teaching or
suggestion in Shaughnessy or Shaughnessy in view of Hazama of "storing
the symbolic representation of dates and their associated information back

33 See generally App. Br. 20; Reply Br. 6-11.
34 See generally App. Br. 11-12; Reply Br. 6-11.
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into the database." (Feb. Response 14; see also Feb. Response 23-24, Dec.
Response 39-40, 75.)
The Examiner found that Shaughnessy teaches storing the symbolic
representation of dates back into the database as a possible, although more
expensive, solution to the Y2K problem. (Ans. 15-16; OA 15; see also FF
12.) The Examiner took notice that this solution "taught by Shaughnessy as
an available solution, is the only permanent solution." (OA 15.)
Appellant's arguments are not convincing. The Examiner has
explained how Shaughnessy teaches or suggests the disputed limitation.
Although Appellant complains that the Examiner's taking of
"'Administrative notice' is not a substitute for providing a reference" (Dec.
Response 39), Appellant has not presented any convincing evidence or
argument to show that the Examiner erred.
Accordingly, we conclude that Appellant has not shown that the
Examiner erred in rejecting claim 9 under 35 U.S.C. § 103(a).

Claim 9: Ohms / Hazama
With respect to claim 9, Appellant argues35 that there is no teaching or
suggestion in Ohms of "storing the symbolic representation of dates and
their associated information back into the database." (Feb. Response 23; see
also Dec. Response 51-54.)
However, we agree with the Examiner (Ans. 24; OA 110; see also FF
46) that Ohms teaches or suggests the disputed limitation of dependent

35 See generally App. Br. 20; Reply Br. 6-11.
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claim 9. Appellant has not made any effort to show error in the Examiner's
findings and reasoning. Therefore, we affirm the rejection of dependent
claim 9 for the reasons stated by the Examiner.

Claim 10: Shaughnessy / Hazama
With respect to claim 10, Appellant argues36 that there is no teaching
or suggestion in Shaughnessy or Shaughnessy in view of Hazama of
"manipulating information in the database having the reformatted date
information therein." (Feb. Response 14; see also Feb. Response 16, Dec.
Response 39, 75.)
However, we agree with the Examiner (Ans. 15; OA 16; see also
FF 12, 18) that Shaughnessy teaches or suggests the disputed limitation of
dependent claim 10. Appellant has not made any effort to show error in the
Examiner's findings and reasoning. Therefore, we affirm the rejection of
dependent claim 10 for the reasons stated by the Examiner.

Claim 10: Ohms / Hazama
With respect to claim 10, Appellant argues37 that there is no teaching
or suggestion in Ohms of "manipulating information in the database having
the reformatted date information therein." (Feb. Response 23; see also
Dec. Response 51-54.)

36 See generally App. Br. 20; Reply Br. 6-11.
37 See generally App. Br. 20; Reply Br. 6-11.
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However, we agree with the Examiner (Ans. 24; OA 110-111; see
also FF 46) that Ohms teaches or suggests the disputed limitation of
dependent claim 10. Appellant has not made any effort to show error in the
Examiner's findings and reasoning. Therefore, we affirm the rejection of
dependent claim 10 for the reasons stated by the Examiner.

Summary
Accordingly, we conclude that Appellant has not shown that the
Examiner erred in rejecting claims 1-3, 5, 7, 9 and 10 under 35 U.S.C.
§ 103(a).

Claims 4, 6, and 8
Claims 4, 6, and 8 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Shaughnessy, Hazama, and Booth (FA 4; OA 16-18) and as
being obvious over Ohms, Hazama, and Booth (FA 9; OA 111-113).

Claim 4: Shaughnessy / Hazama / Booth
With respect to claim 4, Appellant argues38 that there is no teaching or
suggestion in Shaughnessy, Shaughnessy in view of Hazama, or Booth, of
"sorting the symbolic representations of dates." (Feb. Response 13; see also
Feb. Response 14-16, 21; Dec. Response 40-42.) According to Appellant,
"[w]hatever sorting Booth teaches does not need to first reformat the date
data, since the integer format can be and is sorted in its initial format. The

38 See generally App. Br. 12-13; Reply Br. 6-11.
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method of the claimed invention, including the reformatting steps is simply
not relevant to a database that stores date data as Clipper does, in integer
format, as described in Booth." (Feb. Response 21.) Appellant also argues
that Booth is non-analogous art, teaches away, and that modifying
Shaughnessy or the combination of Shaughnessy and Hazama with the
teachings of Booth would render them inoperative for their intended purpose
and would change their principle of operation. (Dec. Response 41.)

Appellant's arguments present the following issue:

Has Appellant shown that the Examiner erred in rejecting claim 4
under 35 U.S.C. § 103(a)?

The resolution of this issue turns on the following subsidiary issues:

1. Has Appellant shown that the Examiner erred in finding that Booth
teaches "sorting the symbolic representations of dates"?

2. Has Appellant shown that the Examiner erred by improperly
combining the references?

Appellant's arguments that the Examiner erred in rejecting claim 4 as
being obvious over Shaughnessy, Hazama, and Booth are not persuasive.
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Regarding the first subsidiary issue, the Examiner correctly found that
Booth teaches the disputed limitation of dependent claim 4. (Ans. 14-15;
OA 16-17; FF 36-38, see also FF 31-35, 39.) In particular, the Examiner
found that Booth, analogously to Shaughnessy, teaches the SET EPOCH
command for comparing a two-digit year with the SET EPOCH year setting
to determine which century to place the date into and teaches converting a
six digit date (MMDDYY) into an eight digit date (CCYYMMDD). (OA 16;
FF 33-35.) "Additionally, Booth complements Shaughnessy and Hazama by
suggesting the sorting of converted dates after having been reformatted by
the SET EPOCH command." (OA 16; FF 36-38.) The SORT command
taught by Booth allows the selection of which field or fields should be sorted
on, the selection of which records should be sorted, and the selection of how
the sort will be conducted -- i.e., in ascending order, descending order, or
"dictionary order." (FF 38.) Appellant has not shown error in these
findings. Appellant's argument regarding integer format does not diminish
the above noted teachings of Booth. Even if Appellant is correct, claim 4
does not preclude the dates being in an integer format and Appellant has not
shown that Booth would not suggest sorting those dates after reformatting.
Therefore, Appellant has not shown that the Examiner erred in finding
that Booth teaches "sorting the symbolic representations of dates."
Regarding the second subsidiary issue, the Examiner has articulated a
reason with rational underpinnings (OA 16-17) as to why one of ordinary
skill in the art would combine the teachings of the applied references --
namely that "Booth's teaching of sorting reformatted dates would facilitate
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Shaughnessy-Hazama's system to return the reformatted dates in
chronological sequence" (OA 16). Appellant has not presented credible
evidence to demonstrate error in this rationale or to demonstrate that the
Examiner used improper hindsight. Appellant has not convincingly
explained why Booth would teach away. For example, the two digit year
format (FF 33) disclosed by Booth is subject to the Y2K date ambiguity
problem just as with Shaughnessy and Hazama. Appellant also has not
convincingly explained why Shaughnessy's and/or Hazama's principle of
operation would need to be changed to incorporate the sort teachings of
Booth or why these references would be rendered inoperative if the sort
teachings of Booth were incorporated.
Therefore, Appellant has not shown that the Examiner erred by
improperly combining the applied references.
Accordingly, we conclude that Appellant has not shown that the
Examiner erred in rejecting claim 4 under 35 U.S.C. § 103(a).

Claim 4: Ohms / Hazama / Booth
With respect to claim 4, Appellant argues39 that there is no teaching or
suggestion in Ohms of "sorting the symbolic representations of dates."
(Feb. Response 23; see also Feb. Response 24-26; Dec. Response 51-54.)
However, as pointed out by the Examiner (Ans. 23-24; OA 111; see
also FF 31-39), it was not Ohms but rather Booth that was relied upon to
teach the disputed limitation of dependent claim 4. As discussed supra, we

39 See generally App. Br. 20-21; Reply Br. 6-11.
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agree that Booth teaches this limitation. Appellant has not made any effort
to show error in the Examiner's findings and reasoning. Therefore, we
affirm the rejection of dependent claim 4 for the reasons previously
discussed and for the reasons stated by the Examiner.

Claim 6: Shaughnessy / Hazama / Booth
With respect to claim 6, Appellant argues40 that there is no teaching or
suggestion in Shaughnessy, Shaughnessy in view of Hazama, or in Booth, of
"sorting the symbolic representations of dates using a numerical-order sort."
(Feb. Response 14; see also Feb. Response 16, 21; Dec. Response 40-42,
75.)
However, we agree with the Examiner (Ans. 15; OA 17; FF 32-38)
that Booth teaches or suggests the disputed limitation of dependent claim 6.
Appellant has not made any effort to show error in the Examiner's findings
and reasoning.
Appellant also repeats the same arguments with respect to the
allegedly improper combination of references as discussed supra with
respect to claim 4. (Dec. Response 42.) We do not find these arguments
persuasive for the same reasons discussed with respect to claim 4.
Therefore, we affirm the rejection of dependent claim 6 for the
reasons stated by the Examiner.

40 See generally App. Br. 12-13; Reply Br. 6-11.
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Claim 6: Ohms / Hazama / Booth
With respect to claim 6, Appellant argues41 there is no teaching or
suggestion in Ohms of "sorting the symbolic representations of dates using a
numerical-order sort." (Feb. Response 23; see also Feb. Response 24-26;
Dec. Response 51-54.)
However, as pointed out by the Examiner (Ans. 23-24; OA 112; see
also FF 32-38), it was not Ohms but rather Booth that was relied upon to
teach the disputed limitation of dependent claim 6. As discussed supra, we
agree that Booth teaches this limitation. Appellant has not made any effort
to show error in the Examiner's findings and reasoning. Therefore, we
affirm the rejection of dependent claim 6 for the reasons previously
discussed and for the reasons stated by the Examiner.

Claim 8: Shaughnessy / Hazama / Booth
With respect to claim 8, Appellant argues42 that there is no teaching or
suggestion in Shaughnessy, Shaughnessy in view of Hazama, or Booth, of
"selecting YA YB such that YB is 0 (zero)." (Feb. Response 14; see also Feb.
Response 16, 20-21; Dec. Response 40-42, 76-77.)
However, we agree with the Examiner (Ans. 16-17; OA 17-18;
FF 31-36) that Booth teaches or suggests the disputed limitation of
dependent claim 8. Appellant has not made any effort to show error in the

41 See generally App. Br. 20-21; Reply Br. 6-11.
42 See generally App. Br. 12-13; Reply Br. 6-11.
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Examiner's findings and reasoning. Therefore, we affirm the rejection of
dependent claim 8 for the reasons stated by the Examiner.
Appellant also repeats the same arguments with respect to the
allegedly improper combination of references as discussed supra with
respect to claim 4. (Dec. Response 42.) We do not find these arguments
persuasive for the same reasons discussed with respect to claim 4.

Claim 8: Ohms / Hazama / Booth
With respect to claim 8, Appellant argues43 that there is no teaching or
suggestion in Ohms of "selecting YA YB such that YB is 0 (zero)." (Feb.
Response 24; see also Feb. Response 23, 25; Dec. Response 51-54.)
However, as pointed out by the Examiner (Ans. 23-24; OA 112-113;
see also FF 31-36), it was not Ohms but rather Booth that was relied upon to
teach the disputed limitation of dependent claim 8. As discussed supra, we
agree that Booth teaches this limitation. Appellant has not made any effort
to show error in the Examiner's findings and reasoning. Therefore, we
affirm the rejection of dependent claim 8 for the reasons previously
discussed and for the reasons stated by the Examiner.

Summary
Accordingly, we conclude that Appellant has not shown that the
Examiner erred in rejecting claims 4, 6, and 8 under 35 U.S.C. § 103(a).

43 See generally App. Br. 20-21; Reply Br. 6-11.
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Claims 11-15
Claims 11-15 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Shaughnessy, Hazama, and Booth (FA 4; OA 18-23) and as
being obvious over Ohms, Hazama, and Booth (FA 9; OA 113-117).
Appellant argues44 that there is "no teaching or suggestion in
Shaughnessy, Hazama, Ohms or Booth, or any combination of these
references of the claimed invention as recited in any of the claims 11-15" for
the reasons previously argued with respect to claims 1-10. (Feb. Response
27; see also Feb. Response 26, Dec. Response 42-43, 51-52.)
We agree with the Examiner (OA 18-23, 113-117) that the applied
prior art teaches or suggests the disputed limitations of claims 11-15.
Appellant has not made any additional effort to show error in the Examiner's
findings and reasoning. Therefore, for the reasons previously discussed with
respect to claims 1-10 and for the reasons stated by the Examiner, we affirm
the rejection of claims 11-15.

Claim 68
Claim 68 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Shaughnessy and Hazama (FA 7; OA 81-84) and as being obvious over
Ohms and Hazama (FA 12; OA 164-166).
Appellant argues45 that the applied references "do not teach or
suggest, separately or collectively, 'reformatting the symbolic representation

44 See generally App. Br. 13, 21; Reply Br. 6-11.
45 See generally App. Br. 17, 26; Reply Br. 6-11.
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of each symbolic representation of a date in at least one date field in the
database, without the addition of any new date field to the database ... in
order to facilitate processing of the reformatted symbolic representations ...
by running a program on the reformatted symbolic representation of each of
the dates' as recited in claim 68." (Feb. Response 36; see also Dec.
Response 48-54)
However, we agree with the Examiner (OA 81-84, 164-166) that the
applied prior art teaches or suggests the disputed limitations of claim 68.
Appellant has not made any effort to show error in the Examiner's findings
and reasoning. Therefore, we affirm the rejection of claim 68 for the reasons
stated by the Examiner.

Claim 69
Claim 69 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Shaughnessy and Hazama (FA 7; OA 84-86) and as being obvious over
Ohms, Hazama, and Booth (FA 13; OA 166-169.)
Appellant argues46 that "the claim recites 'sorting the reformatted
symbolic representations ... and running a program on the reformatted
symbolic representations of each of the dates,' which is not taught or
suggested by these references, separately or collectively" and also relies on
"the same arguments as made with respect to claim 68." (Feb. Response 36;
see also Dec. Response 48-54.)

46 See generally App. Br. 18, 26; Reply Br. 6-11.
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However, we agree with the Examiner (OA 84-86, 166-169) that the
applied prior art teaches or suggests the disputed limitations of claim 69.
Appellant has not made any effort to show error in the Examiner's findings
and reasoning. Therefore, we affirm the rejection of claim 69 for the reasons
stated by the Examiner and for the reasons previously discussed with respect
to claim 68.

Claim 73
Claim 73 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Shaughnessy and Hazama (FA 8; OA 96-98) and as being obvious over
Ohms and Hazama (FA 13; OA 176-178).
Appellant argues47 that "neither Ohms, Shaughnessy, Booth nor
Hazama, separately or collectively, teaches or suggests 'determining a
century designator ... for each symbolic representation of a date in the
database' and 'reformatting the symbolic representation of the date ... to
facilitate further processing of the dates,' as recited in claim 73." (Feb.
Response 37-38; see also Dec. Response 49-54.)
However, we agree with the Examiner (OA 96-98, 176-178) that the
applied prior art teaches or suggests the disputed limitations of claim 73.
Appellant has not made any effort to show error in the Examiner's findings
and reasoning. Therefore, we affirm the rejection of claim 73 for the reasons
stated by the Examiner.

47 See generally App. Br. 19, 27-28; Reply Br. 6-11.
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Claim 74
Claim 74 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Shaughnessy, Hazama, and Booth (FA 8; OA 98-101) and as being
obvious over Ohms, Hazama, and Booth (FA 14; OA 178-180).
Appellant argues48 that "neither Ohms, Shaughnessy, Booth nor
Hazama, separately or collectively, teaches or suggests 'determining a
century designator ... for each symbolic representation of a date in the
database' and 'reformatting the symbolic representation of the date ... to
facilitate further processing of the dates,' and 'sorting the dates in the
[reformatted] form,' as recited in claim 74." (Feb. Response 38; see also
Dec. Response 49-54.)
However, we agree with the Examiner (OA 98-101, 178-180) that the
applied prior art teaches or suggests the disputed limitations of claim 74.
Appellant has not made any effort to show error in the Examiner's findings
and reasoning. Therefore, we affirm the rejection of claim 74 for the reasons
stated by the Examiner.

Claim 75
Claim 75 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Shaughnessy and Hazama (FA 8; OA 101-104) and as being obvious
over Ohms, Hazama, and Booth (FA 14; OA 180-182).

48 See generally App. Br. 19, 28; Reply Br. 6-11.
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With respect to claim 75, Appellant argues49 "neither Ohms,
Shaughnessy, Booth nor Hazama, separately or collectively, teaches or
suggests 'determining a century designator ... for each symbolic
representation of a date in the database' and 'reformatting the symbolic
representation of each symbolic representation of a date in the database,
without the addition of any new data field to the database ... to facilitate
further processing of the reformatted symbolic representations of each of the
symbolic representations of each of the dates,' as recited in claim 75." (Feb.
Response 38; see also Dec. Response 49-54.)
However, we agree with the Examiner (OA 101-104, 180-182) that
the applied prior art teaches or suggests the disputed limitations of claim 75.
Appellant has not made any effort to show error in the Examiner's findings
and reasoning. Therefore, we affirm the rejection of claim 75 for the reasons
stated by the Examiner.

Claim 76
Claim 76 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Shaughnessy, Hazama, and Booth (FA 9; OA 104-107) and as being
obvious over Ohms, Hazama, and Booth (FA 14; OA 182-184).
With respect to claim 76, Appellant argues50 that "the same arguments
that applied to claim 75 apply to claim 76 and in addition the claim recited

49 See generally App. Br. 19-20, 28; Reply Br. 6-11.
50 See generally App. Br. 20, 28-29; Reply Br. 6-11.
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'sorting the dates in the [reformatted] form ....'" (Feb. Response 38; see also
Dec. Response 49-54.)
However, we agree with the Examiner (OA 104-107, 182-184) that
the applied prior art teaches or suggests the disputed limitations of claim 76.
Appellant has not made any effort to show error in the Examiner's findings
and reasoning. Therefore, we affirm the rejection of claim 75 for the reasons
stated by the Examiner and for the reasons previously discussed with respect
to claim 75.

Claims 16-67 and 70-72
We do not reach the merits of the Examiner's rejections of claims
16-67 and 70-72 under 35 U.S.C. § 103(a) or the merits of the Shaughnessy,
Hazama, Booth, and Ohms references with respect to these claims at this
time. Rather, we vacate the outstanding rejection under 35 U.S.C. § 103(a)
because, as discussed supra, claims 16-67 and 70-72 fail to satisfy the
requirements of 35 U.S.C. § 112, second paragraph.
Before a proper review of the prior art rejections can be performed,
the subject matter encompassed by the claims on appeal must be reasonably
understood without resort to speculation. See In re Steele, 305 F.2d 859, 862
(CCPA 1962) (A prior art rejection cannot be sustained if the hypothetical
person of ordinary skill in the art would have to make speculative
assumptions concerning the meaning of claim language.); see also In re
Wilson, 424 F.2d 1382, 1385 (CCPA 1970 ("If no reasonably definite
meaning can be ascribed to certain terms in the claim, the subject matter
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does not become obvious-the claim becomes indefinite."). Presently,
speculation and conjecture must be utilized by us and by the artisan
inasmuch as claims 16-67 and 70-72 on appeal do not adequately reflect
what the disclosed invention is under the second paragraph of 35 U.S.C.
§ 112. As discussed supra, the recited limitations of "collectively further
processing," "collectively sorting," "collectively manipulating," "running a
program collectively," and "windowing" render these claims indefinite.

Appellant's Request to Dismiss the '6541 Proceeding
Appellant requests that we dismiss the '6541 proceeding, in which the
Examiner found that the Saka reference, Japanese Published Patent
Application 06-103133, raised a substantial new question of patentability as
to claims 1-15. (App. Br. 8 & n.3; Reply Br. 6; see also Order Granting
Request for Ex Parte Reexamination mailed April 21, 2003.) According to
Appellant, Saka does not present a substantial new question of patentability
because the Examiner has not used Saka to reject any of the claims. (App.
Br. 8 & n.3; Reply Br. 6.) However, Appellant has not cited any authority to
demonstrate that the Board has jurisdiction to decide this issue.
"The line of demarcation between appealable matters for the Board of
Patent Appeals and Interferences (Board) and petitionable matters for the
Director of the U.S. Patent and Trademark Office (Director) should be
carefully observed. The Board will not ordinarily hear a question that
should be decided by the Director on petition." (MPEP § 1201.)
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In our view, we do not have the authority to rule on whether the
Director properly granted the request for reexamination. The Director is
given the authority to determine whether a substantial new question of
patentability is raised. 35 U.S.C. § 303(a). "A substantive determination by
the Director of the USPTO to institute reexamination pursuant to a finding
that the prior art patents . . . raise a substantial new question of patentability
is not subject to review by the courts until a final agency decision in the
reexamination proceedings has issued." (MPEP § 2246 (citing Joy Mfg. Co.
v. Nat'l Mine Serv. Co., 810 F.2d 1127 (Fed. Cir. 1987), Heinl v. Godici, 143
F. Supp.2d 593 (E.D. Va. 2001), and Patlex Corp. v. Quigg, 680 F. Supp. 33
(D.D.C. 1988)).) We note that a petition under 37 C.F.R. § 1.181 may be
filed "to vacate an ultra vires reexamination order." (MPEP § 2246.)
Appellant has not indicated that any such petition has been filed.
Because this is a petitionable matter for the Director and not an
appealable matter for the Board, we decline to decide this issue.

CONCLUSIONS
Based on the findings of facts and analysis above, we conclude that:
(1) Appellant has not shown that the Examiner erred in rejecting
claims 16-67 and 70-72 under 35 U.S.C. § 112, first paragraph.
(2) Appellant has shown that the Examiner erred in rejecting claims
69, 75, and 76 under 35 U.S.C. § 112, first paragraph.
(3) Appellant has not shown that the Examiner erred in rejecting
claims 16-67 and 70-72 under 35 U.S.C. § 112, second paragraph.
Appeal 2008-4652
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(4) Appellant has shown that the Examiner erred in rejecting claims
1-15, 68, 69, and 73-76 under 35 U.S.C. § 112, second paragraph.
(5) Appellant has not shown that the Examiner erred in rejecting
claims 1-15, 68, 69, and 73-76 under 35 U.S.C. § 103.

DECISION
The rejection of claims 16-67 and 70-72 under 35 U.S.C. § 112, first
paragraph, is affirmed.
The rejection of claims 69, 75, and 76 under 35 U.S.C. § 112, first
paragraph, is reversed.
The rejection of claims 16-67 and 70-72 under 35 U.S.C. § 112,
second paragraph, is affirmed.
The rejection of claims 1-15, 68, 69, and 73-76 under 35 U.S.C.
§ 112, second paragraph, is reversed.
The rejection of claims 1-15, 68, 69, and 73-76 for obviousness under
35 U.S.C. § 103 is affirmed.
The rejection of claims 16-67 and 70-72 for obviousness under 35
U.S.C. § 103 is vacated.

At least one ground of rejection for each rejected claim has been
affirmed.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

Appeal 2008-4652
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AFFIRMED

ack

Patent Owner:

BRUCE DICKENS
DICKENS-SOEDER 2000 LLC
3892 CEDRON STREET
IRVINE, CA 92606

Counsel for Third Party Requesters:

ROSS F. HUNT, JR.
C/O LARSON AND TAYLOR
1199 NORTH FAIRFAX STREET SUITE 900
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PAUL E. CRAWFORD
CONNOLLY BOVE LODGE & HUTZ LLP
1200 MARKET STREET
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STANLEY B. GREEN
CONNOLLY BOVE LODGE & HUTZ LLP
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