Ex Parte Fisher

Board of Patent Appeals and Interferences

Mar 19, 2008

10036815 (B.P.A.I. Mar. 19, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WAYNE E. FISHER
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Appeal 2007-2387
Application 10/036,815
Technology Center 2100
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Decided: March 19, 2008
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Before JOSEPH L. DIXON, ANITA PELLMAN GROSS, and
SCOTT R. BOALICK, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1-18. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.

Appeal 2007-2387
Application 10/036,815

BACKGROUND

Appellant’s invention relates to a system and method for ensuring that
a database and its description are synchronized in an Information
Management System (IMS) database (Spec. 1). An understanding of the
invention can be derived from a reading of exemplary claim 1, which is
reproduced below.

1. A method of ensuring that an IMS database and a description
for said IMS database, are synchronized, wherein said description is
stored in a data management block, and wherein said database
comprises a first portion and second portion, the method comprising:

storing a copy of said description, used to load said database,
within said first portion of said database, wherein said copy is
maintained in said database;

before accessing said second portion of said database,
comparing said copy of the said description with said description
stored in said data management block; and

determining whether said copy of said description and said
description stored in said data management block are synchronized.

PRIOR ART
The prior art reference of record relied upon by the Examiner in
rejecting the appealed claims is:
Ahmad US 5,745,748 Apr. 28, 1998
REJECTIONS
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Application 10/036,815

Claims 1-18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ahmad.
Rather than reiterate the conflicting viewpoints advanced by the
Examiner and Appellant regarding the above-noted rejection, we make
reference to the Examiner's Answer (mailed January 8, 2007) for the
reasoning in support of the rejections, and to Appellant’s Brief (filed
October 10, 2006) and Reply Brief (filed March 12, 2007) for the arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful
consideration to Appellant’s Specification and claims, to the applied prior art
reference, and to the respective positions articulated by Appellant and the
Examiner. As a consequence of our review, we make the determinations
that follow.
35 U.S.C. § 103
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). “[T]he Examiner
bears the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). Furthermore, “‘there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness’ . . . [H]owever, the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
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Application 10/036,815

can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 127
S. Ct. 1727, 1741 (2007)(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).

Appellant argues that Ahmad does not teach storing a copy of a DBD
(Database Description) in an IMS (Information Management System)
database to be accessed, and Ahmad does not teach comparing the copy of
the DBD in the database to the DBD in the DMB (Database Management
Block) control block as recited in independent claim 1 (App. Br. 6 and Reply
Br. 2-3). Appellant further argues that the Examiner has not supported the
proffered conclusory and subjective opinions concerning the teachings of
Ahmad (App. Br. 6 and Reply Br. 3).
The Examiner has offered the teachings at columns 6 and 12 of
Ahmad to support the Examiner's position that a copy of the DBD is
maintained in a remote computer containing the IMS database and storing
the DBD at the local computer for later accessing the remote IMS database
(Ans. 3-4). The Examiner further maintains that Ahmad teaches in the
background of the invention at column 3 that the IMS database is subject to
frequent changes and that Ahmad teaches determining whether the DBD
copies are synchronized before each access to the database when Ahmad
shows the local DBD is mapped to the information on the remote computer
in column 12 (Ans. 4).
While Ahmad does discuss direct access of the IMS database to utilize
a particular DBD and cross-references/maps the DBD information on the
local computer to the DBD information on the remote computer, we do not
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find that Ahmad specifically teaches comparing the copy of the DBD in the
database to the DBD in the DMB control block, as claimed. While we find
that Ahmad does teach updating a cross-reference table with the DBD
information to allow direct IMS data access, we cannot agree with the
Examiner's conclusory statements concerning the teachings of Ahmad
regarding the inclusion of a copy of the DBD in the IMS at page 4 of the
Answer. Nor has the Examiner supported those conclusory statements with
any convincing line of reasoning to support those assertions. Therefore, we
find the Examiner has not set forth a sufficient initial showing of
obviousness of the invention as recited in independent claim 1, and we
cannot sustain the rejection of independent claim 1, and the respective
dependent claims 2-17.
Similarly, we find independent claim 18 (written in a somewhat
dependent claim fashion) also contains the same limitations as discussed
with respect to independent claim 1. Therefore, we find that the Examiner's
rejection also lacks a proper initial showing of obviousness over Ahmad.
Therefore, we cannot sustain the rejection of independent claim 18 over the
teachings of Ahmad.
CONCLUSION
In summary, we reversed the rejection of claims 1-18 under 35 U.S.C.
§ 103(a).

REVERSED

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Appeal 2007-2387
Application 10/036,815

ce

MICHAEL P. ADAMS
WINSTEAD SECHREST & MINICK P.C.
5400 RENAISSANCE TOWER
1201 ELM STREET
DALLAS, TX 75270-2199
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