Ex Parte Klein

Board of Patent Appeals and Interferences

Dec 23, 2010

10931729 (B.P.A.I. Dec. 23, 2010)

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.
10/931,729 08/31/2004 Udo Klein 11884/501901 8538
53000 7590 12/23/2010
KENYON & KENYON LLP
1500 K STREET N.W.
WASHINGTON, DC 20005
EXAMINER
YEN, SYLING
ART UNIT PAPER NUMBER
2166
MAIL DATE DELIVERY MODE
12/23/2010 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 UDO KLEIN
____________________

Appeal 2009-006727
Application 10/931,7291
Technology Center 2100
____________________

Before JAY P. LUCAS, CAROLYN D. THOMAS, AND DEBRA K.
STEPHENS, Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL2

1 Application filed August 31, 2004. The real party in interest is SAP.
2 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 2009-006727
Application 10/931,729

STATEMENT OF THE CASE
Appellant appeals from a final rejection of claims 1 to 20 under
authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).

We reverse the Examiner’s rejections under 35 U.S.C. §§ 103(a) and
112, 1st paragraph. We apply a new ground of rejection to claims 1 to 16
under 35 U.S.C. § 101.

Appellant’s invention relates to a method of efficiently and reliably
name searching within an employee database (Spec. ¶ [0027]). In the words
of Appellant:
The present invention preferably uses multiple
searching algorithms such as an exact algorithm
and a fuzzy algorithm. The exact algorithm is used
to provide a first set of a limited number of results
from the entire database. The fuzzy algorithm is
then used to search through only the first set of
results to quickly provide a ranked results list that
is displayed to a user.
(Id.).

The following claims illustrate the claims on appeal:
Claims 1 and 9:
1. A method for name searching within an
employee records database comprising:

receiving a full name as a text string;

searching an employee records database for
an exact match of the full name;
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Application 10/931,729

forming a first selection group of names
from the employee records database using an exact
searching algorithm which determines an extent to
which portions of a first size of the names of the
employee records database match portions of the
first size of the text string,

forming a second selection group of names
from the first selection group using a fuzzy
searching algorithm which determines an extent to
which portions of a second size of the names of the
first selection group match portions of the second
size of the text string, wherein the second size is
smaller than the first size;

displaying the second selection group as a
ranked list of names; and

allowing a selection of a name from the
displayed ranked list of names.

9. An apparatus for name searching within an
employee records database comprising:

means for receiving a full name as a text
string;

means for storing an employee records
database;

means for forming a first selection group of
names from the employee records database using
an exact searching algorithm which determines an
extent to which portions of a first size of the names
of the employee records database match portions
of the first size of the text string;
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Application 10/931,729

means for forming a second selection group
of names from the first selection group using a
fuzzy searching algorithm which determines an
extent to which portions of a second size of the
names of the first selection group match portions
of the second size of the text string, wherein the
second size is smaller than the first size;

means for displaying the second selection
group as a ranked list of names; and

means for allowing a selection of a name
from the displayed ranked list of names.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Geary US 6,070,160 May 30, 2000
Stern US 2002/0032740 A1 Mar. 14, 2002
Lapir US 2004/0054666 A1 Mar. 18, 2004

REJECTIONS
The Examiner rejects the claims as follows:

R1: Claims 1 to 20 stand rejected under 35 U.S.C. § 112, 1st paragraph, for
lack of support for a “first size” and a “second size,” as claimed.
R2: Claims 1, 8, 9, 16, and 17 stand rejected under 35 U.S.C. § 103(a) for
being obvious over Geary in view of Stern.
R3: Claims 2 to 7, 10 to 15, and 18 to 20 stand rejected under
35 U.S.C. § 103(a) for being obvious over Geary in view of Stern further in
view of Lapir.

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We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUES
The issues involve whether Appellant has shown that the Examiner
erred in rejecting the claims under 35 U.S.C. § 112, 1st paragraph, and
35 U.S.C. § 103(a). The issue under 35 U.S.C. § 112, 1st paragraph,
involves whether the Specification provides support for the claimed “first
size” and the claimed “second size” (claim 1). The issue under
35 U.S.C. § 103(a) specifically turns on whether Geary and Stern render
obvious Appellant’s claimed method steps of “forming a first selection
group of names from the employee records database using an exact
searching algorithm which determines an extent to which portions of a first
size of the names of the employee records database match portions of the
first size of the text string” and “forming a second selection group of names
from the first selection group using a fuzzy searching algorithm which
determines an extent to which portions of a second size of the names of the
first selection group match portions of the second size of the text string.”
(Claim 1).

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
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Disclosure
1. Appellant has invented a method for searching names within an
employee records database (claim 1). The claimed method includes
receiving a full name as a text string and searching a first group of names
from the database using an exact searching algorithm that determines the
extent to which a first size of the names match a first size of the received
text string (id.). Appellant’s method further includes searching a second
group of names from the first selection group using a fuzzy searching
algorithm that determines an extent to which portions of a second size of the
names of the first selection group match portions of the second size of the
text string, such that the second size is smaller than the first size (id.). The
first size and second size represent trigrams (i.e., groups of three written
letters) and digrams (i.e., groups of two written letters), respectively
(¶ [0034]).
Geary
2. The Geary reference discloses a method for name searching using
fuzzy logic and deterministic logic in combination (Abstract).
Stern
3. The Stern reference discloses searching a global computer network for
keywords (Abstract).

PRINCIPLE OF LAW
Appellant has the burden on appeal to the Board to demonstrate
Examiner error. See In re Kahn, 441 F.3d 977, 985-86.
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ANALYSIS
Arguments with respect to the rejection
of claims 1 to 20
under 35 U.S.C. § 112, 1st paragraph [R1]

The Examiner has rejected the noted claims for a lack of support for
the claimed “first size” and the claimed “second size,” as recited in
exemplary claim 1 (Fin. Rej. mailed August 6, 2007 at pages 2 to 3).
We disagree. We find that the claimed “first size” and “second size”
of claim 1 represent trigrams (i.e., groups of three written letters) and
digrams (i.e., groups of two written letters), respectively. The Specification
is clear in delineating the relative size of the text strings, that is, the
character count. We thus find that Appellant has demonstrated error in the
Examiner’s rejection R1. Accordingly, we reverse.

Argument with respect to the rejection
of claims 1 to 20
under 35 U.S.C. § 103(a) [R2 and R3]

The Examiner has rejected the noted claims for being obvious over
various prior art, including the Geary and Stern references, pages 3 to 9 of
the Examiner’s Answer.
Appellant argues:
While the truncating step of the Geary
reference, in which a last letter of a word is
removed, may result in a shorter word to match
than the word to which matches were sought prior
to Geary’s truncating step, the truncated word as a
whole is then compared to words in a database.
For each different size of the initial word, a single
portion of the initial word is used in the
comparisons. Accordingly, “portions” of a first
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Application 10/931,729

size and ‘portions’ of a second size of names or
any other string are not compared to other words.
Instead [in Geary] for each size, a single portion of
the initial word, i.e., the truncated word as a whole,
is compared to other words.”
(App. Br. 7, middle) (emphasis omitted).

We find Appellant’s argument persuasive and dispositive regarding
the Examiner’s obviousness rejections R2 and R3. We find that Appellant
has invented a method for searching names within an employee records
database (FF#1). The claimed method includes receiving a full name as a
text string and searching a first group of names from the database using an
exact searching algorithm that determines the extent to which a first size of
the names matches a first size of the received text string (id.). Appellant’s
method further includes searching a second group of names from the first
selection group using a fuzzy searching algorithm that determines an extent
to which portions of a second size of the names of the first selection group
match portions of the second size of the text string, such that the second size
is smaller than the first size (id.). The first size and the second size represent
trigrams (i.e., groups of three written letters) and digrams (i.e., groups of two
written letters), respectively (id.). In contrast, we find that the Geary
reference merely discloses a method for name searching using fuzzy logic
and deterministic logic in combination (FF#2). The Stern reference simply
discloses searching a global computer network for keywords (FF#3).
REJECTION OF CLAIMS 1 TO 16 UNDER 37 C.F.R. § 41.50(b)

We apply a new ground of rejection under 35 U.S.C. § 101 to the
above-noted claims.
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Claims 1 to 16 stand rejected under 35 U.S.C. § 101 for failing to
qualify as statutory subject matter.
Though claims 1 to 8 recited a method, not every method is
patentable. “‘Abstract ideas’ are one type of subject matter that the Supreme
Court has consistently held fall beyond the broad reaches of patentable
subject matter under 35 U.S.C. § 101.” In re Comiskey, 554 F.3d 967, 977
(Fed. Cir. 2009).
The machine-or-transformation test is one of the investigative tools,
which was identified in Bilski v. Kappos, 130 S.Ct. 3218 (2010), for
determining when a method may qualify as a § 101 process. The U.S. Court
of Appeal for the Federal Circuit summarized the test as being satisfied
“when the process ‘either [1] was tied to a particular apparatus’ or [2]
operated to change materials to a “different state or thing.’” In re Comiskey,
554 F.3d 967, 978 (Fed. Cir. 2009) (citing PTO Supp. Br. 4 (quoting Parker
v. Flook, 437 U.S. 584, 588 n.9 (1978))).
Exemplary claim 1 recites a method for name searching within an
employee records database. Limitations merely specify the nature of the
data and are not tied to any machine or transformation of an article of
manufacture. We therefore apply the new grounds of rejection to
representative claim 1.
With respect to exemplary claim 9, we note that data structures not
claimed as embodied in computer-readable media are descriptive material
per se and are not statutory because they are not capable of causing
functional change in the computer. (See In re Warmerdam, 33 F.3d 1354,
1361 (Fed. Cir. 1994).)
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Independent claim 9 recites an “apparatus.” However, we note that
the Specification discloses “algorithms and displays presented herein
relating to the name searching methods are not inherently related to any
particular computer or other apparatus.” (¶ [0049]). In view of Appellant’s
disclosure, we find that the “apparatus” of claim 9 is merely software per se.
In accordance with the teachings of In re Warmerdam, cited above, claim 9
and its dependencies do not qualify as statutory subject matter under
35 U.S.C. § 101.

CONCLUSIONS OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellant has shown that the Examiner erred in rejecting claims 1 to 20.
Above, we applied a new ground of rejection under 35 U.S.C. § 101 for
claims 1 to 16.
DECISION
We reverse the Examiner’s rejections R1 to R3 of claims 1 to 20. We
apply a new grounds of rejection under 35 U.S.C. § 101 to claims 1 to 16.

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-IN-PART
37 C.F.R. § 41.50(b)

peb

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Appeal 2009-006727
Application 10/931,729

KENYON & KENYON LLP
1500 K STREET N.W.
WASHINGTON, DC 20005
11