Ex parte Hintz et al.

Board of Patent Appeals and Interferences

Jun 21, 2000

08168976 (B.P.A.I. Jun. 21, 2000)

An amendment after the final rejection was filed [Paper1
No. 8] and was approved for entry by the Examiner [Paper No.
9].
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte THOMAS E. HINTZ and KERRY C. TENBERG
________________
Appeal No. 1997-0243
Application 08/168,976
________________
ON BRIEF
________________
Before THOMAS, HAIRSTON and LALL, Administrative Patent
Judges.
LALL, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claim 1,1
the sole pending claim.
Appeal No. 1997-0243
Application 08/168,976
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The disclosed invention uses a novel SORT record for each
primary key and each foreign key, collating SORT records, in a
single phase, so as to group together those records for each
primary key for subsequent diagnostic analysis. This is an
improvement on the prior art methods of the two-phase DATA
CHECK operations since the invention uses reading data-record
and index-entry data in parallel and eliminates the need to
create a working data set of the information being checked.
The invention is further illustrated by the following claim.
1. A single-phase method of checking DB2 referential
integrity, comprising the steps of:
(a) extracting, in parallel, (1) all of zero or more
instances of one or more specified foreign keys, referred to
as FK occurrences, and (2) zero or more instances of one or
more specified primary keys, referred to as PK occurrences;
(b) constructing a SORT record for each said FK
occurrence, referred to as an FK SORT record, and a SORT
record for each said PK occurrence, referred to as a PK SORT
record;
(c) collating the FK SORT records with the PK SORT
records into a single sequence of SORT records to group
together the PK SORT records for each primary key, with the
respective FK SORT records for each of any foreign key
associated with each said primary key; and
(d) performing a specified diagnosis routine utilizing
said single sequence of SORT records as an input.
The references relied on by the Examiner are:
Appeal No. 1997-0243
Application 08/168,976
A new ground of rejection, based on Haderle, was added2
in the Examiner’s answer.
A reply brief was filed as paper no. 15 and a3
supplemental reply brief as paper no. 17. The Examiner
presented a supplemental answer, paper no. 16, in response to
the reply brief. However, the Examiner entered the
supplemental reply brief without any further response [paper
no. 18].
A supplemental answer was mailed as paper no. 16.4
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Haderle et al. (Haderle) 4,933,848 Jun. 12,
1990
Crus et al. (Crus) 5,133,068 Jul. 21, 1992
Knuth, Donald E., “The Art of Computer Programming”, Addison-
Wesley Publishing Company, Reading, Massachusetts, pgs. 159-
173 (1973). (Knuth)
Claim 1 stands rejected under 35 U.S.C. § 103 over Crus
and Knuth, or over Haderle alone.2
Reference is made to Appellants’ briefs and the3
Examiner's answer for their respective positions.4
OPINION
We have considered the record before us, and we will
reverse the rejection of claim 1.
In rejecting claim 1 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,
Appeal No. 1997-0243
Application 08/168,976
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837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In
so doing, the Examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1, 17, 148 USPQ 459, 467 (CCPA), and to provide a reason why
one having ordinary skill in the pertinent art would have been
led to modify the prior art or to combine prior art references
to arrive at the claimed invention. Such reason must stem
from some teaching, suggestion or implication in the prior art
as a whole or knowledge generally available to one having
ordinary skill in the art. Uniroyal, Inc. v. Rudkin-Wiley
Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.),
cert. denied, 488 U.S. 825 (1988); Ashland Oil, Inc. v. Delta
Resins & Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657,
664 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986); ACS
Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221
USPQ 929, 933 (Fed. Cir. 1984). These showings by the
Examiner are an essential part of complying with the burden of
presenting a prima facie case of obviousness. Note In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992).
Furthermore, the Federal Circuit states that “[the] mere
Appeal No. 1997-0243
Application 08/168,976
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fact that the prior art may be modified in the manner
suggested by the Examiner does not make the modification
obvious unless the prior art suggested the desirability of the
modification.” In re Fitch, 972 F.2d 1260, 1266 n.14, 23
USPQ2d 1780, 1783-84 n.14 (Fed. Cir. 1992), citing In re
Gordon, 773 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984). “Obviousness may not be established using hindsight or
in view of the teachings or
suggestions of the inventor”. Para-Ordnance Mfg. v. SGS
Importers Int’l, 73 F.3d 1087, 37 USPQ 2d at 1239 (Fed. Cir.
1995), citing W. L. Gore & Assocs., v. Garlock, Inc., 721 F.2d
at 1551, 1553, 220 USPQ at 311, 312-13 (Fed. Cir. 1983).
Rejection using Crus and Knuth
After discussing Crus and Knuth individually, the
Examiner asserts [answer, page 5] that "it would have been
obvious ... to incorporate the collating of Knuth in the
single enforcement procedure of Crus for defining referential
constraints between data tables ...."
Appellants argue [brief, pages 7 to 9] about the
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Application 08/168,976
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distinction of the invention over Crus and Knuth and conclude
that “[i]n view of the significant technical distinctions
between the invention of claim 1 and Crus et al., the
Examiner’s assertion that Crus et al. discloses the 'claimed
extracting of the primary and foreign keys' is believed to be
incorrect. This incorrect assertion is not made correct by
combining it with the generic 'sort' teaching of Knuth." [Id.
9].
After reviewing the further response by the Examiner
[answer, pages 7 to 8] and Appellants’ arguments [reply brief,
page 3], we are of the view that claim 1 calls for a method of
creating a specific type of data structure involving the steps
of “extracting, in parallel, ...,” “constructing a SORT record
...,” and “collating the FK SORT records ....”. We do not
find these steps in either of these references or their
combination. Instead, Crus states that “[e]ach relationship
descriptor contains a complete description of a referential
constraint, ... The use of meta-data descriptors facilitates
... speedy enforcement of the constraints by a single, shared
procedure ....” [Abstract]. The Examiner has not convinced us
how the teachings of Crus correspond to the claimed steps of
Appeal No. 1997-0243
Application 08/168,976
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creating the particular type of data structure. Furthermore,
Knuth does not cure this deficiency. Therefore, we do not
sustain the obviousness rejection of claim 1 over Crus and
Knuth.
Rejection using Haderle
The Examiner asserts [answer, page 6] that “Haderle
substantially teaches the steps of the claimed invention
except does not explicitly indicate a single-phase integrity
checking. ... It would have been obvious ... to consider the
method of Haderle a single phase method because Hadrele [sic,
Haderle] teaches that, 'it is a matter of design choice', to
update the primary indexes in a load phase or a subsequent
phase (line[s] 44-50 of col. 6).”
Appellants argue that “[t]he mere fact that Haderle
requires a load phase (i.e., [the] use of working data set)
distinguishes
the claimed single pass method from Haderle” [reply brief,
page 6].
In response, the Examiner points to col. 12 and col. 7 of
Haderle to support his position. Appellants counter
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[supplemental reply brief, pages 3 to 6] that Haderle's method
of checking the integrity of data is different from the
claimed method.
We have reviewed the Examiner’s citations of col. 12 and
col. 7. Col. 12, lines 19 to 24 of Haderle state that “[t]he
deferred method extracts foreign key values, then sorts them
to allow referential integrity checking ....” (Emphasis
added). Col. 7, lines 23 to 27 of Haderle further state that
“the SORT phase 26 sorts the key data set 50 ... loaded in
Data Load phase 24, into a sorted key data [set] 68 set (sic)
which is optimal for index updating and efficient checking of
referential constraints" (emphasis added).
We opine that Haderle is a multi-phase method in contrast
to the claimed single-phase process. The Examiner’s assertion
that it is a mere design choice to come up with the claimed
steps of the claimed single-phase method of data-integrity
checking using Haderle’s quoted teachings is not tenable.
Therefore, we do not sustain the Examiner’s obviousness
rejection of claim 1 over Haderle.
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Application 08/168,976
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In conclusion, the Examiner’s decision rejecting claim 1
under 35 U.S.C. § 103 is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
KENNETH W. HAIRSTON ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
PARSHOTAM S. LALL )
Administrative Patent Judge )
PSL/ki
Appeal No. 1997-0243
Application 08/168,976
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Arnold, White & Durkee
P. O. Box 4433
Houston, TX 77210-4433