Ex Parte Kemmler

Patent Trials and Appeals Board

May 28, 2019

13902666 - (D) (P.T.A.B. May. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/902,666 05/24/2013
50400 7590 05/30/2019
SCHWEGMAN LUNDBERG & WOESSNER/SAP
P.O. BOX 2938
MINNEAPOLIS, MN 55402
Andreas Kemmler
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2058.855US 1 4486
EXAMINER
TESSEMA, AIDA Z
ART UNIT PAPER NUMBER
2157
NOTIFICATION DATE DELIVERY MODE
05/30/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
uspto@slwip.com
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREAS KEMMLER
Appeal2016-008086
Application 13/902,666
Technology Center 2100
Before JUSTIN BUSCH, JOHN D. HAMANN, and JOYCE CRAIG,
Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner's decision to reject claims 1-20, which constitute all the claims
pending in this application. We have jurisdiction over the pending claims
under 35 U.S.C. § 6(b).
We affirm-in-part.
CLAIMED SUBJECT MATTER
Appellant's invention generally "relates to changes that impact
underlying system operation, such as in a database" and, more particularly,
"to handling changes in database tables that are converted from automatic
sort to no automatic sort." Spec. ,r 1; see Abstract. In other words, the
invention attempts to help manage changes to the underlying system
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Application 13/902,666
operation, such as changing a system from providing a function ( e.g.,
automatic sort) to not providing that function. Spec. ,r 2; see Spec. ,r 33,
Abstract. The exemplary change discussed throughout Appellant's
disclosure involves a change to a database system that alters "how or when
tables are sorted." Spec. ,r 2; see Spec. ,r 33. Providers and users may write
program code that depends on a particular operation of the underlying
system, such as the database automatically sorting results, and, if that
underlying system changes, the program code may become inoperable, or
not function properly. Spec. ,r 2; see Spec. ,r 33.
Appellant's invention may use a data dictionary to define data
structures and/or data types and map the data to an underlying relational
database, depending on the database chosen by a user. Spec. ,r 19. The data
"dictionary may also provide functions for editing fields on the screen, such
as assigning input to a screen field." Spec. ,r 19. The invention uses a
tri-state variable associated with a data structure to indicate the state of the
database (i.e., function enforced, function recommend, and function not
provided) to manage underlying system changes. Spec. ,r,r 33--40. The
function enforced state indicates a first entity ( e.g., the developer) is still
relying on the function ( e.g., auto sort), the function recommended state
indicates the second entity is ( or may be) relying on the function but the first
entity is not relying on the function, and the not provided state indicates
neither entity is relying on the function. Claims 1, 9, and 15 are independent
claims. Claims 1 and 15 are reproduced below:
1. A method comprising:
identifying a value of a tri-state variable associated with a
data structure, the data structure utilized by a sequence of
instructions executable on a processor, the value of the tri-state
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variable being selected from the group consisting of a function
enforced state, a function recommended state, and a function not
provided state;
when the value of the tri-state variable is the function
enforced state, providing a function upon execution of the
sequence of instructions;
when the value of the tri-state variable is the function
recommended state, providing the function upon execution of the
sequence of instructions; and
when the value of the tri-state variable is the function not
provided state, not providing the function upon execution of the
sequence of instructions.
15. A machine-readable storage medium compnsmg
instructions that, when executed by at least one processor of a
machine, configure the machine to:
receive a request to modify a value of a tri-state variable
associated with a data structure from a current value to a next
value, the current value and the next value being selected from a
group consisting of a function enforced state, a function
recommended state, and a function not provided state
when the current value is the function enforced state, and
when the next value is the function recommended state, set the
value of the tri-state variable to the next value;
when the current value is the function recommended state,
and when the next value is the function not provided state, set the
value of the tri-state variable to the next value; and
when the current value is the function not provided state
and when the next value is the function enforced state, issue a
wammg.
REJECTIONS
Claims 1-8 stand rejected under 35 U.S.C. § 102 as anticipated by
Carmody (WO 2005/073876 A2 Aug. 11, 2005). Final Act. 8-11.
Claims 9-14 stand rejected under 35 U.S.C. § 103 as obvious in view
of Carmody and Applicant Admitted Prior Art ("AAPA"). Final Act. 12-16.
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Claims 15-20 stand rejected under 35 U.S.C. § 103 as obvious in
view of Carmody. Final Act. 16-19.
ANALYSIS
THE ANTICIPATION REJECTION OF CLAIMS 1-8
The Examiner finds Carmody discloses every limitation recited in
claims 1-8. Appellant separately argues the patentability of claims 1--4, 6,
and 8. Appellant does not separately argue the patentability of claims 5 and
7, which directly depend from claim 1. Therefore, we group claims 5 and 7
with claim 1.
Claims 1, 5, and 7
Of particular relevance to Appellant's arguments regarding
independent claim 1, the Examiner finds Carmody' s description of an issuer
determining "whether the updates will take place automatically, or be
controlled by the user, or are to be abandoned if certain pre-conditions are
not met" discloses a tri-state variable having a value selected from one of "a
function enforced state, a function recommended state, and a function not
provided state." Final Act. 9 (citing Carmody 3:8-14, Abstract). The
Examiner further finds this same description in Carmody discloses
"providing a function upon execution of the sequence of instructions" when
the value of the variable is either in the "function enforced state" or the
"function recommended state" and not providing the function when the
value of the variable is in the "function not provided state." Final Act. 9
(citing Carmody 3:8-14, Abstract).
Appellant argues the Examiner improperly equates a human action to
the recited tri-state variable. Appeal Br. 13-15; Reply Br. 3--4. In
particular, Appellant argues the issuer determining whether Carmody's
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database should perform updates automatically, at the discretion of the user,
or be abandoned if certain pre-conditions are not met is a human action,
which does not disclose the recited tri-state variable. Appeal Br. 13-14.
Appellant argues a person of ordinary skill in the art would understand that
Carmody's "issuer" is a user and the issuer decides how updates are handled
(i.e., the database's update state). Appeal Br. 13. Appellant asserts
Carmody fails to describe how the issuer conveys this decision or controls
which state the database is in. Appeal Br. 13-14; see Appeal Br. 14
("Carmody specifies what actions users (issuer or user, as the case may be)
can take without specifying how those actions are effectuated."). Appellant
argues construing the claimed tri-state variable to encompass a human action
is unreasonably broad. Appeal Br. 14--15.
The Examiner finds Carmody relates to a process for automatically
updating a database and the "issuer" in Carmody need not be a human being.
Ans. 2-3. The Examiner explains that, because the issuer determines the
automatic update is in one of three states, Carmody describes a tri-state
variable. Ans. 3.
Carmody describes conventional database applications or systems as
having tables of data and "program code that can perform operations upon
the data that change the data itself and which interact with a user to display
or update data." Carmody 1 :6-11. Carmody explains that one must know
the structure of the data tables in order to design program code that will
properly function. Carmody 1: 11-16. Carmody explains that, as program
code or table structure changes over time, "it becomes increasingly difficult
to ensure that the code and the data structure remain consistent." Carmody
1 :20-25. Carmody further describes that it is common for a developer to
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distribute a database system to many users such that the developer may not
have direct access to each version of the database system the developer
distributed. Carmody 1 :25-2:2. The lack of direct access makes it difficult
for the developer to verify current data structures and also necessitates
updating the database remotely. Carmody 2:2--4. Carmody describes
additional challenges when remotely updating databases. Carmody 2:7-16.
Carmody attempts to reliably and securely update databases by
providing "a mechanism to read the specification of a database and
automatically derive the structure of the data and the associated code and
event handlers." Carmody 2: 17-21. Carmody describes automatically
updating the database structure when the data dictionary is updated in a
"normal embodiment." Carmody 3: 11-12. Carmody further describes "a
desirable refinement" in which "the issuer can determine whether the
updates will take place automatically, or be controlled by the user, or are to
be abandoned" in certain conditions. Carmody 3: 12-14.
Appellant and the Examiner agree that Carmody discloses an
embodiment in which an "issuer" determines how updates are performed
(i.e., automatically, user-controlled, or abandoned under certain conditions).
See Appeal Br. 13-14; Ans. 2-3. Given Carmody's disclosures discussed
above, we disagree with Appellant's argument that a person of ordinary skill
in the art would understand Carmody's issuer to be a user. Carmody
references the user interacting with the system via user interfaces for
providing output and receiving input. See, e.g., 4:23-25, 6:26-7:2.
Carmody only references the issuer, however, with respect to determining
whether updates are automatic, user-controlled, or abandoned in certain
conditions. See Carmody 3:12-14, Abstract. Based on this context, we
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determine one of ordinary skill in the art would have understood that
Carmody's issuer could be the database system provided to an end user or
the entity providing the database system. Appellant does not identify any
persuasive evidence demonstrating that an ordinarily skilled artisan would
have understood Carmody's issuer only to be a human being.
Carmody's invention relates to dynamically updating a database when
the data dictionary changes. See Carmody Abstract ("the database structure
may be automatically updated and changed whenever the dictionary is
updated"). In other words, Carmody's "normal embodiment" automatically
updates the database and the refinement allows an issuer to determine one of
three automatic update states. Carmody 3: 11-14. Therefore, an ordinarily
skilled artisan would have understood Carmody to disclose a database
system that stores the issuer-determined state so the database system can
determine, at runtime, when updates should be performed. 1
Based on this understanding of how a person of ordinary skill in the
art would have interpreted Carmody's disclosure, we are not persuaded the
Examiner improperly maps the recited tri-state variable to a human action.
Rather, we agree with the Examiner that a person of ordinary skill in the art
would have understood Carmody's refined embodiment to disclose an issuer
selecting one of three states for automatic updates and storing a value in the
system representing that state so that the system updates the database in
1 Notably, claim 1 does not recite who or what performs the identifying step,
but claim 1 recites "identifying a value of a tri-state variable." Regardless,
to the extent Carmody's issuer could be a human, we would also find
Appellant's argument unpersuasive. In such a case, a person of ordinary
skill in the art would have understood Carmody to disclose the issuer
determines a state to be stored in a variable so the system could determine, at
runtime, whether and when updates should be performed.
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accordance with the issuer's determination and any other relevant
information, such as user-controlled settings or the evaluation of certain pre-
conditions.
Appellant also argues that, even assuming Carmody discloses the
recited tri-state variable, Carmody fails to disclose the recited states of that
variable. Appeal Br. 15-17. Appellant argues Carmody's disclosed update
states (i.e., automatic updates, user-controlled updates, or abandoning
updates if certain pre-conditions are not met) are different than the recited
states (i.e., "function enforced state," "function recommended state," and
"function not provided state"). Appeal Br. 16. More specifically, Appellant
argues the only function provided in response to Carmody's update states is
applying an update. Appeal Br. 16. Appellant argues that, because
Carmody's database may be updated in any of the three identified update
states, providing the update function is not dependent on Carmody' s update
state, whereas claim 1 requires that providing the function is dependent on
the state. Appeal Br. 16-1 7.
The Examiner finds Carmody's automatic update state discloses the
recited "function enforced state," Carmody's state allowing a user to
determine whether to update the database discloses the recited "function
recommended state" "because it may or may not be performed based on the
discretion of a user," and Carmody's state that abandons the update if certain
pre-conditions are not met disclose the recited "function not provided state."
Ans. 4. Consistent with Appellant's arguments addressing these limitations,
we understand the Examiner's rejection to find updating the database in
Carmody discloses the recited steps that provide "the function upon
execution of the sequence of instructions" and not updating the database ( or
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abandoning updates) in Carmody discloses the recited step of "not providing
the function upon execution of the sequence of instructions."2
Even assuming the prior art must show each of the providing steps in
order to anticipate claim 1, 3 we are not persuaded the Examiner erred in
finding Carmody discloses the providing steps recited in claim. In the
automatic update state (i.e., the "function enforced state"), Carmody
automatically updates the database (i.e., "providing a function") upon
executing a sequence of instructions that use and change Carmody' s data
dictionary. In the user-controlled update state (i.e., the "function
recommened state"), Carmody updates the database (i.e., "providing the
function") upon executing a sequence of instructions that use and change
Carmody's data dictionary in those instances in which the user elects to
update the database. Therefore, in at least some instances, Carmody
discloses updating the database in the user-controlled state. Finally, in the
abandoning updates when certain pre-conditions are not met state (i.e., the
"function not provided state"), Carmody abandons updates to (i.e., does not
update) the database (i.e., "not providing the function") upon execution a
2 We refer to the last three steps relating to providing or not providing the
function collectively as "the providing steps."
3 In Ex parte Schulhauser, Appeal No. 2013-007847, at *9 (PTAB, April 28,
2016) (precedential), the Board held the Examiner need not demonstrate all
of the recited method were known in the prior art because the claimed steps
were only performed when certain conditions were met. In other words,
conditional steps whose condition precedent need not occur do not limit a
method claim under a broadest reasonable interpretation of that claim. In
this case, it appears the claimed tri-state variable may take only one of the
three possible values, in which case two of the three conditions precedent
would not be met. We leave this question of claim construction to the
Examiner should this matter undergo further prosecution.
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sequence of instructions that use and change Carmody' s data dictionary in
those instances where certain pre-conditions are not met. Therefore, in at
least some instances (when the pre-conditions are not met), Carmody
discloses not updating the database in its third state.
Appellant's claims do not recite that the state of the tri-state variable
is the only factor that determines whether the function is provided. More
specifically, Appellant's claims do not require "providing the function"
every time the tri-state variable is in the function recommended state or "not
providing the function" every time the tri-state variable is in the function not
provided state. Appellant's argument that Carmody fails to disclose the
recited states because "the update function can be provided in all three" of
Carmody's update states "depending on preconditions and user choices,"
Appeal Br. 16-17; Reply Br. 3--4, is not persuasive because it is not
commensurate with the scope of the claims.
For these reasons, we are not persuaded the Examiner erred in finding
Carmody discloses every limitation recited in independent claim 1, and we
sustain the Examiner's rejection of claim 1 as anticipated by Carmody. We
also sustain the Examiner's rejection of claims 5 and 7, which were not
argued separately with particularity.
Claim 2
Claim 2 depends from claim 1 and further recites "enforcing a set of
state transition rules on the value of the tri-state variable." Of particular
relevance to Appellant's arguments regarding claim 2, the Examiner finds
Carmody's description of an issuer determining "whether [the] updates will
take place automatically, or be controlled by the user, or are to be abandoned
if certain pre-conditions are not met" and initiating actions on data as the
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state of the database changes discloses enforcing a set of state transition
rules. Final Act. 9 (citing Carmody 3:8-14).
In the Answer, the Examiner explains Carmody' s "automatic updates,
updates performed by user, and abandoned updates" teach the recited states
(i.e., the three allowed values) of the tri-state variable. Ans. 5. The
Examiner finds that Carmody enforces "a set of transition rules on the value,
or issuer's determination, of the tri-state variable, or group of options
provided to the issuer" because Carmody changes the database's state based
on a predetermined condition. Ans. 5. The Examiner finds Carmody's user-
controlled state, which allows a user to determine whether updates should be
performed, discloses the recited state transition rules. Ans. 5---6. The
Examiner also finds "the state of the database is the same as the state of the
tri-state variable as the value of the tri-state variable determine the state of
the database." Ans. 6.
Appellant argues Carmody does not disclose the recited state
transition rules. Appeal Br. 17-19; Reply Br. 4--5. Appellant notes the
Examiner finds the issuer-determined system states (i.e., automatic updates,
user-controlled, or abandoned when pre-conditions are not met) disclose the
recited states. Appeal Br. 18; Reply Br. 4. Appellant argues the Examiner,
therefore, must demonstrate that Carmody discloses rules for transitioning
between the issuer-determined system states in order for Carmody to
anticipate claim 2. Appeal Br. 18; Reply Br. 4.
Appellant asserts the Examiner instead finds Carmody' s description of
changing the state of the database itself discloses a state transition, which is
inconsistent with the Examiner's finding with respect to claim 1 that
Carmody' s issuer-determined system states disclose the recited states. In
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other words, Appellant argues that, even assuming Carmody discloses
transition rules for the state of the database (i.e., rules for determining
whether to update the database), such transition rules fail to disclose the
recited "set of state transition rules on the value of the tri-state variable."
Appeal Br. 18-19; Reply Br. 4. Appellant further contends Carmody is
silent with regard to rules for changing the issuer-determined system states
or whether the issuer can change this state once it is determined and simply
disclosing that an issuer determines the system state fails to disclose "any set
of state transition rules for transitioning from one option to another." Reply
Br. 4--5.
To the extent the Examiner finds Carmody' s state in which a user
controls whether updates occur somehow discloses the recited state
transition rules, we disagree. Initially we note, contrary to the Examiner's
finding, this state does not teach the user changing the value of a tri-state
variable; in fact, the system determines it is in this state using the value of
the tri-state variable. Compare Ans. 5---6 ("when the updates, or value, of
the tri-state variable is determined by the user," emphasis added), with
Carmody 3:8-14. As discussed above with respect to claim 1, the Examiner
finds Carmody' s updating a database discloses the claimed "providing a
function" and Carmody's storage of a value representing which of the three
possible states the system is operating in discloses the recited "value of a tri-
state variable." Accordingly, Carmody's disclosure of a user controlling
whether or when updates occur is not relevant to the recited step of
"enforcing a set of state transition rules on the value of the tri-state variable"
because the Examiner finds the current issuer-determined system state
discloses the value of the recited tri-state variable.
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For this reason, we also agree with Appellant that Carmody is silent
with respect when or how its issuer-determined system state may change, if
at all, from one state to another state. Because Carmody fails to disclose
transitioning from one state to another, we further agree with Appellant that
Carmody fails to disclose the recited "set of state transition rules on the
value of the tri-state variable" because the recited tri-state variable simply
stores a representation of Carmody' s current issuer-determined system state.
Therefore, we are persuaded the Examiner erred in determining Carmody
discloses the additionally-recited limitation in dependent claim 2.
Claims 3, 4, and 6
Claims 3, 4, and 6 each ultimately depend from, and incorporate the
limitations of, claim 2. Therefore, for the same reasons discussed above, we
are persuaded the Examiner erred in rejecting claims 3, 4, and 6 as
anticipated by Carmody.
Claim 8
Claim 8 depends from claim 1 and further recites "the value of the tri-
state variable is set at the time the sequence of instructions are created or
modified." The Examiner finds Carmody's discloses this additional
limitation because Carmody describes storing both the definitions of data
and the operations to be performed on the data in a data dictionary and
changing database field values at runtime. Final Act. 11 ( citing Carmody
2:22-24, 7:19-20); Ans. 8 ("how to update the database structure is set when
the dictionary definitions are created.").
Appellant argues Carmody' s disclosure of how Carmody stores data
and operations performed on the data and when Carmody updates fields in
the database are not related to claim 8's additionally-recited limitation.
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Appeal Br. 23; Reply Br. 6. Specifically, Appellant argues Carmody's
portions the Examiner cites have nothing to do with creating or modifying
the recited sequence of instructions or setting the recited tri-state variable,
which Appellant notes the Examiner finds taught by the three issuer-
determined system states. Appeal Br. 23; Reply Br. 6. Appellant further
argues the Examiner, therefore, must demonstrate that Carmody discloses
the issuer determining the system state "at the time the sequence of
instructions are created or modified" in order for Carmody to anticipate
claim 8, but Carmody does not describe when the issuer makes the system
state decision. Reply Br. 6.
We agree with Appellant. As discussed in our analysis of claim 2
above, the Examiner finds Carmody discloses a tri-state variable because
Carmody describes three issuer-determined system states, such that a stored
representation of each of these states discloses a potential value of the
claimed tri-state variable. As Appellant argues, the Examiner then finds
changing a value of a database field discloses setting the tri-state variable
value recited in claim 8. Carmody's database field values are different than
the three issuer-determined states.
We also agree with Appellant that Carmody is silent regarding when
its issuer sets the system state. Because Carmody fails to disclose when its
issuer sets the value of the system state, we further agree with Appellant that
Carmody fails to disclose the recited limitation that "the value of the tri-state
variable is set at the time the sequence of instructions are created or
modified." Therefore, we are persuaded the Examiner erred in determining
Carmody discloses the additionally-recited limitation in dependent claim 8.
Summary of Anticipation Rejection of Claims 1---8
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We sustain the Examiner's anticipation rejection of claims 1, 5, and 7.
We reverse the Examiner's anticipation rejection of claims 2--4, 6, and 8.
THE OBVIOUSNESS REJECTION OF CLAIMS 9-14
The Examiner finds Carmody and AAP A teach or suggest every
limitation recited in independent claim 9 and claims 10-14, which ultimately
depend from claim 9. Final Act. 12-16. Of particular relevance to the
dispositive issue with respect to claims 9-14, the Examiner finds Carmody's
description of an issuer determining "whether [the] updates will take place
automatically, or be controlled by the user, or are to be abandoned if certain
pre-conditions are not met" and initiating actions on data as the state of the
database changes discloses enforcing a set of state transition rules. Final
Act. 13 (citing Carmody 3:8-14).
Appellant argues Carmody, even when combined with AAP A, fails to
teach or suggest the "set of state transition rules" recited in claim 9, referring
in part to Appellant's argument with respect to claim 2. Appeal Br. 30-31;
Reply Br. 8; see Appeal Br. 18-19; Reply Br. 4--5. We agree with
Appellant.
For the reasons discussed above with respect to claim 2, we determine
Carmody fails to disclose enforcing "a set of state transition rules ... to
determine whether to change the value of the tri-state variable," as recited in
claim 9. Moreover, even assuming Carmody suggests that the issuer may
change the issuer-determined state from one state to another, Carmody's
cited portions are silent regarding how or when such transitions may occur.
More importantly, Carmody does not describe any rules governing such a
state change and, therefore, fails to teach or suggest the recited instructions
that "enforce a set of state transition rules in order to determine whether to
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change the value of the tri-state variable from the current value to the next
value," as recited in independent claim 9.
For these reasons, we do not sustain the Examiner's rejection of claim
9 as obvious in view of Carmody and AAPA. Nor do we sustain the
Examiner's rejection of claims 10-14 as obvious in view of Carmody and
AAPA because claims 10-14 ultimately depend from, and incorporate the
limitations of, claim 9.
THE OBVIOUSNESS REJECTION OF CLAIMS 15-20
The Examiner finds Carmody teaches or suggests every limitation
recited in independent claim 15 and claims 16-20, which ultimately depend
from claim 15. Final Act. 17-20. Of particular relevance to the dispositive
issue with respect to claims 15-20, the Examiner finds Carmody' s
description of rules about when a value in a database field should be
changed based on current and new values teaches or suggests setting the
value of the tri-state variable to the particularly recited state when currently
in a different particular state. Final Act. 13 ( citing Carmody 9: 14--19,
13:7-11). In response to Appellant's arguments that Carmody fails to teach
a set of state transition rules for the tri-state variable, the Examiner
references the response to claims 1 and 2. Ans. 13; see Ans. 2---6.
Appellant argues, in part, Carmody fails to teach the particular state
transition rules recited in claim 15. Appeal Br. 36-38; Reply Br. 9-10.
Specifically, Appellant argues the claims recite setting the value of the tri-
state variable, which has one of the three recited values-i.e., "function
enforced state," "function recommended state," and "function not provided
state." Appeal Br. 36-37. Appellant contends Carmody fails to teach or
suggest a transition between the three issuer-determined system states (i.e.,
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automatic update, user-controlled, or abandon if certain pre-conditions are
not met), which the Examiner finds teaches the three recited values of the
tri-state variable, let alone particular rules governing such a transition.
Reply Br. 9. Appellant asserts that, even accepting the Examiner's finding
that Carmody' s cited portions teach or suggest changing a value in a field
based on current and new values, that does not teach changing the value of a
variable from one of Carmody's issuer-determined system states to another,
which are the values the Examiner finds teach or suggest the values recited
in the prior step. Appeal Br. 36-37; Ans. 9.
We are persuaded the Examiner erred. As Appellants note, the
Examiner finds Carmody' s representations of the three issuer-determined
system states teach or suggest the values of the tri-state variable recited in
claim 15. See Final Act. 17. The Examiner then relies on Carmody's
disclosure of changing values in a field of Carmody' s database, not a value
representing Carmody' s issuer-determined system states, teaches setting the
value of the tri-state variable in the remainder of the claim. Final Act. 17.
The Examiner, therefore, has not demonstrated that Carmody teaches or
suggests rules for setting the tri-state variable that stores a value representing
the issuer-determined state.
For these reasons, on this record, we are persuaded the Examiner
erred in finding Carmody teaches or suggests the particular state transition
rules recited in independent claim 15. Accordingly, we do not sustain the
Examiner's rejection of claim 15 as obvious in view of Carmody. Nor do
we sustain the Examiner's rejection of claims 16-20 as obvious in view of
Carmody because claims 16-20 ultimately depend from, and incorporate the
limitations of, claim 15.
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DECISION
We affirm the Examiner's decision to reject claims 1, 5, and 7 under
35 U.S.C. § 102 as anticipated by Carmody.
We reverse the Examiner's decision to reject claims 2--4, 6, and 8
under 35 U.S.C. § 102 as anticipated by Carmody.
We reverse the Examiner's decision to reject claims 9-14 under
35 U.S.C. § 103 as obvious in view of Carmody and AAPA.
We reverse the Examiner's decision to reject claims 15-20 under
35 U.S.C. § 103 as obvious in view of Carmody.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
18