Ex Parte Hu et al

Board of Patent Appeals and Interferences

Jan 31, 2011

10966679 (B.P.A.I. Jan. 31, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/966,679 10/14/2004 Wei Hu 50277-2558 8193
42425 7590 01/31/2011
HICKMAN PALERMO TRUONG & BECKER/ORACLE
2055 GATEWAY PLACE
SUITE 550
SAN JOSE, CA 95110-1083
EXAMINER
MENG, JAU SHYA
ART UNIT PAPER NUMBER
2168
MAIL DATE DELIVERY MODE
01/31/2011 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte WEI HU, ALEXANDER HWANG, SHEN-BAN MENG,
ALOK PAREEK, DMITRY POTAPOV, and FRANCISCO SANCHEZ
____________________

Appeal 2009-007013
Application 10/966,679
Technology Center 2100
____________________

Before JOHN A. JEFFERY, THU A. DANG, and STEPHEN C. SIU,
Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-007013
Application 10/966,679

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I. STATEMENT OF THE CASE
Appellants appeal from the Examiner’s final rejection of claims 1-11
and 13-23 under 35 U.S.C. § 134(a) (2002). Claims 12 and 24 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
We affirm.

A. INVENTION
According to Appellants, the invention is related to the field of
transferring data between databases (Spec. 1, ¶[0005]).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary and is reproduced below:
1. A machine-implemented method for transporting a first collection
of files from a first system to a second system including a second collection
of files, the method comprising the steps of:

converting within the first collection of files certain on-disk data
structures in the first collection of files from a first on-disk format to a
second on-disk format;

wherein converting includes storing in the first collection of files the
certain on-disk data structures in the second on-disk format;

wherein, prior to the converting, the first collection of files was
attached to the first system and included the certain on-disk data structures,
and wherein the first system was configured to use the first collection of files
with on-disk data structures formatted according to the first on-disk format;
and

after said converting, attaching the first collection of files to the
second system configured to use a collection of files with on-disk data
structures formatted according to the second on-disk format.

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C. REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Whitten US 2004/0153459 A1 Aug. 5, 2004
Ellis US 2004/0182225 A1 Sep. 23, 2004
Mortensen US 2005/0015386 A1 Jan. 20, 2005
(filed Jul. 15, 2003)

Claims 1-7, 10, 11, 13-19, 22, and 23 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the teachings of Whitten in view of
Mortensen.
Claims 8, 9, 20, and 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the teachings of Whitten in view of Mortensen and Ellis.

II. ISSUE
Has the Examiner erred in concluding that the combined teachings of
Whitten in view of Mortensen would have suggested “after said converting,
attaching the first collection of files to the second system” (claim 1)? In
particular, the issue turns on whether Whitten teaches or suggests
“attaching” a file after converting.

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Whitten
1. Whitten discloses transferring a database from a server to a client
across database types, vendors and without development effort
(Abstract).
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2. The data access interface 44 of the client 22 processes data received
from the server 14 and using the Java DataBase Connectivity (JCBC)
interface 36 recreates a database 24 corresponding to the structure of
the source database 26 and populates the database 27 with data
received from the server 14 resulting in the database 27 being a copy
of the source database 26 for use by the client 22 (pg. 3, [0029]; Figs.
1-4).

IV. ANALYSIS
Claims 1-7, 10, 11, 13-19, 22, and 23
Though Appellants admit that Whitten’s method “involves extracting
data from the source database …, sending the data over a network to a client,
… and populating tables in the target database” (App. Br. 6), Appellants
contend that “the Examiner has unreasonably construed the claim term
‘attaching’ in a manner that is not consistent with Appellants’ specification”
since “Appellants’ specification discloses that the claimed ‘attaching’
method is a distinct improvement on the extract and insert method” (App.
Br. 7). In particular, Appellants contend “attaching” as noted in the
specification “allows data to be copied using operating system utilities for
copying files, which copy the physical bits and executes much faster than the
process of extracting and loading data by executing queries and insert
statements” (id.).
Appellants further contend that “[t]here is absolutely no teaching or
suggestion in Whitten that the files of the source database are used to store
data for the database on the client” but rather “the files of the source
database are used to store data for the source database only” (App. Br. 10).
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Though Appellants admit that “[t]he database transfer object [of Whitten]
contains database data and metadata extracted from the files of the source
database” (id.), Appellants argue that “[n]owhere does Whitten teach or
suggest that files of the source database are attached to the client system by
virtue of sending the database transfer object to the client (id.).
However, in the Examiner’s Answer, the Examiner finds that there is
no recited feature “in the body of the claim language in claim 1 to
distinguish claim limitation from reference” (Ans. 16). The Examiner finds
that Whitten “reads on the claimed limitation in light of the specification”
and that “limitations from the specification are not read into the claims”
(id.).
Appellants’ arguments that “the claimed ‘attaching’ method is a
distinct improvement on the extract and insert method” since “attaching” as
noted in the specification “allows data to be copied using operating system
utilities for copying files, which copy the physical bits and executes much
faster than the process of extracting and loading data by executing queries
and insert statements” (App. Br. 7) is not commensurate in scope with the
language of representative claim 1. That is, claim 1 does not recite any such
improvement or “allows data to be copied using operating system utilities
for copying files, which copy the physical bits and executes much faster”
limitation. Thus, we agree with the Examiner’s finding that there is no such
feature recited “in the body of the claim language in claim 1” (Ans. 16).
Similarly, Appellants’ contention that “[t]here is absolutely no
teaching or suggestion in Whitten that the files of the source database are
used to store data for the database on the client” (App. Br. 10) is not
commensurate in scope with the specific language of claim 1 since the claim
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does not recite any such storing data for the database on the client
requirement. Thus, contrary to Appellants’ contention, there is no language
in claim 1 that precludes that “the files of the source database are used to
store data for the source database only” (App. Br. 10).
To address whether the combined teachings would have suggested
“attaching the first collection of files to the second system” as explicitly
recited in claim 1, we give the claims their broadest reasonable interpretation
in light of the Specification. See In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir.
2004). However, we will not read limitations from the Specification into the
claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
The language of claim 1 does not define what “attaching” is to mean,
include or represent other than that, in the method for transporting a first
collection of files from a first system to a second system, the first collection
of files is to be attached to the second system after converting. Further,
Appellants’ Specification describes “attach” as “configuring a database
and/or database server” (Spec. 3, [0009]). Thus, we give the term
“attaching” its ordinary meaning consistent with the Specification of
“making a part of,” and therefore construe claim 1 to require a step of
making the first collection of files a part of the second system as defined by
Appellants’ claims. That is, we give the term “attaching” its broadest
reasonable interpretation as defined by the claims and consistent with the
specification.
Similarly, the language of claim 1 does not define “a collection of
files.” In fact, the claim does not even define what is a “file.” Thus, we give
the term “file” its ordinary meaning of “a set of data,” and therefore construe
claim 1 in the broadest, reasonable manner as requiring the step of making
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the set of data from a first system a part of the second system as defined by
Appellants’ claims.
In construing the claimed terms “attaching” and “file,” while we
considered the ordinary meaning of the term, we nonetheless relied upon the
definition of the term provided in Appellants’ claim 1, and consistent with
the Specification to construe the cited term.
Whitten discloses transferring a database from a server to a client (FF
1), wherein a database is created on a client corresponding to the structure of
the source database on the server, and the database is populated with data
received from the server, resulting in the database being a copy of the source
database for use by the client (FF 2).
We find Whitten to disclose transporting sets of data from a first
system such as a server to a second system such as a client. In fact, even
Appellants admit that Whitten’s method “involves extracting data from the
source database …, sending the data over a network to a client, … and
populating tables in the target database” (App. Br. 6).
Further, we find that after converting from the format of the server to
the format of the client, Whitten discloses making the set of data received
from the first system a part of the second system. Thus, in view of the claim
construction above, we find Whitten to at the least suggest “after said
converting, attaching the first collection of files to the second system” as
required by claim 1.
Though Appellants also argue that the proposed modification of
Whitten with the teachings of Mortensen “would render the client-server
system of Whitten unsatisfactory for its intended purpose” (App. Br. 11),
Mortensen was merely relied upon by the Examiner for the teaching that the
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files can be of certain on-disk data structures. We conclude that such
modification of data as certain on-disk data structures is no more than a
simple arrangement of old elements, with each performing the same function
it had been known to perform, yielding no more than one would expect from
such an arrangement. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007).
The skilled artisan would “be able to fit the teachings of multiple
patents together like pieces of a puzzle” since the skilled artisan is “a person
of ordinary creativity, not an automaton.” Id. at 420-21. Appellants have
presented no evidence that modifying Whitten’s sets of data with
Mortensen’s certain on-disk data structures was “uniquely challenging or
difficult for one of ordinary skill in the art” or “represented an unobvious
step over the prior art.” See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19).
Accordingly, we agree with the Examiner that Whitten in view of
Mortensen would have suggested the features of claim 1. Therefore, we do
not find error in the Examiner’s rejection of representative claim 1 and
claims 2-7, 10, 11, 13-19, 22, and 23 falling therewith under 35 U.S.C.
§ 103(a) over the teachings of Whitten in view of Mortensen.
Claims 8, 9, 20, and 21
As for claims 8, 9, 20, and 21, Appellants merely argue that “these
limitations [missing from Whitten and Mortensen] are not taught or
suggested by Ellis” (App. Br. 14). As discussed above, we find no
deficiencies in Whitten and Mortensen. Accordingly, we also do not find
error in the Examiner’s rejection of claims 8, 9, 20, and 21 under 35 U.S.C.
§ 103(a) over the teachings of Whitten in view of Mortensen and Ellis.
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V. CONCLUSION AND DECISION
The Examiner did not err in concluding that claims 1-11 and 13-23 are
unpatentable under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

rwk

HICKMAN PALERMO TRUONG & BECKER/ORACLE
2055 GATEWAY PLACE
SUITE 550
SAN JOSE, CA 95110-1083