Ex Parte Kumar

Patent Trials and Appeals Board

Jun 4, 2019

14025853 - (D) (P.T.A.B. Jun. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/025,853 09/13/2013
51121 7590
IPHORIZONS PLLC
C/0 Ms. Chetana Thappeta
13495 Briar Ct
Saratoga, CA 95070
06/06/2019
FIRST NAMED INVENTOR
Saurabh Kumar
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.
ORCL-188-US 5717
EXAMINER
OBISESAN, AUGUSTINE KUNLE
ART UNIT PAPER NUMBER
2156
NOTIFICATION DATE DELIVERY MODE
06/06/2019 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):
intercomm@iphorizons.com
lfnt2000@gmail.com
oracle@iphorizons.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SAURABH KUMAR
Appeal2018-005481
Application 14/025,853
Technology Center 2100
Before MICHAEL J. STRAUSS, JOSEPH P. LENTIVECH, and
PHILLIP A. BENNETT, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner's decision to reject claims 1-3, 5-16, and 18-22. Claims 4 and 17
have been canceled. See Appeal Br. 15-22 (Claims Appendix). We have
jurisdiction over the pending claims under 35 U.S.C. § 6(b).
We affirm-in-part.
1 According to Appellant, the real party in interest is Oracle International
Corporation. Appeal Br. 2.
Appeal2018-005481
Application 14/025,853
STATEMENT OF THE CASE
Appellant's Invention
Appellant's invention generally relates to "databases and more
specifically to use of email ( electronic mail) to update records stored in a
database server." Spec. ,r 2. Claims 1, 21, and 22, which are illustrative,
read as follows:
1. A method of managing records, said method comprising:
storing a plurality of records in a database server, wherein
said plurality of records includes a first record containing a first
column set to a first data value;
issuing a first structured query directed to said database
server to retrieve a set of records of interest, wherein said query
specifies a condition and wherein each of said set of records
satisfies said condition, wherein said set of records includes said
first record with said first data value;
forming a first file by incorporating into said first file, said
set of records retrieved from said database server, wherein each
of said set of records, including said first record with said first
data value, is incorporated into said first file after being retrieved
from said database server;
sending said first file, containing said set of records, by
email to a user;
receiving a second file, with at least one of said set of
records modified, by email from said user, wherein said second
file indicates a second data value for said first column of said
first record; and
propagating the modifications contained in said second
file to said database server, upon receipt of said second file,
wherein said propagating comprises issuing a second structured
query directed to said database server to update said at least one
of said set of records,
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wherein said first data value for said first column is
replaced by said second data value in said database server due to
execution of said second structured query in said database server.
21. The method of claim 1, wherein said plurality of records
includes a second record with a third data value for said first
column in said database server,
wherein said second record with said third data value is
retrieved as a part of said set of records and incorporated into
said first file sent to said user,
wherein said second file indicates said third data value for
said first column of said second record,
wherein said second structured query is designed to update
said first record but not said second record in said database server
in view of change of data value of said first record but not said
second record.
22. The method of claim 1, wherein said second file contains
a respective additional field for each of said set of records,
wherein the additional field indicates whether the corresponding
record has been modified or not, wherein the additional field for
said first record indicates that said first record has been modified,
said method further comprising:
parsing said second file to determine the specific records
of said set of records which are indicated by the respective
additional fields as having been modified,
wherein said second structured query is designed to update
only said specific records in said database server.
Rejections
Claims 1-3, 5, 8, 9, 14--16, 18, 21, and 22 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over the combination ofBicioglu (US
2009/0144266 Al; published June 4, 2009), Jung et al. (US 2007 /0219979
Al; published Sept. 20, 2007) ("Jung"), Bedingfield (US 2002/0143812 Al;
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Application 14/025,853
published Oct. 3, 2002), and Agarwal et al. (US 5,842,196; issued Nov. 24,
1998) ("Agarwal"). Non-Final Act. 5-20.
Claims 6, 7, 10-13, 19, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination ofBicioglu, Jung,
Bedingfield, Agarwal, and Rangaswamy et al. (US 2011/0282707 Al;
published Nov. 17, 2011) ("Rangaswamy"). Non-Final Act. 21-35.
ANALYSIS
Issue 1: Is Jung analogous art?
The Examiner finds "Jung is directed to [a] process of determin[ing] a
search result based on a search parameter" and "the instant application
update[s] database record through query execution." Non-Final Act. 3; see
also Ans. 3. The Examiner concludes, therefore, "[b J oth the instant
application and Jung are directed to the same field of endeavor i.e. query
processing." Id.
Appellant argues Jung is not in the same field of endeavor as the
claimed invention because "[ w ]hile the claimed invention relates to use of
Email to update records stored in a database server, Jung relates to live
searches with use restrictions." Appeal Br. 7. Appellant argues "the
searches of Jung would merely retrieve data for providing the relevant
search results" and "there is no 'update' to any database servers which are
queried for the purpose of performing search results." Reply Br. 1.
Appellant further argues the Examiner "relies on the mechanics employed
by Jung in the field of endeavor to arrive at an erroneous conclusion that
Jung is from the same field of endeavor as the claimed invention." Appeal
Br. 7.
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Appellant further argues:
Here, the inventors' problem is to provide a convenient off-line
mechanism to update database records, particularly when there
is no connectivity or immediate access to the database records
for the person making the changes. See paragraph 046 of the
[S]pecification as filed.
In sharp contrast, Jung is related to 'live' searches, which
are inherently online activities with network connectivity as a
pre-requisite. Thus, Jung is clearly directed to a different
purpose than the claimed invention. Jung would not accordingly
logically commend itself to the attention of the inventor of the
instant application in considering the problem solved in the
instant application. In other words, a person of ordinary skill in
the art would not have thought about live searches ( of Jung) in
considering how to use email to update records stored in a
database server.
Appeal Br. 7-8. We disagree.
"A reference qualifies as prior art for an obviousness determination
under § 103 only when it is analogous to the claimed invention." In re
Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (citation omitted); see also
Innovention Toys, LLC, v. MGA Entertainment, Inc., 637 F.3d 1314, 1321
(Fed.Cir.2011); In re Clay, 966 F.2d 656, 658 (Fed.Cir.1992). "Two
separate tests define the scope of analogous prior art: (1) whether the art is
from the same field of endeavor, regardless of the problem addressed and,
(2) if the reference is not within the field of the inventor's endeavor, whether
the reference still is reasonably pertinent to the particular problem with
which the inventor is involved." In re Bigio, 381 F.3d 1320, 1325
(Fed.Cir.2004) (citation omitted); see also Klein, 647 F.3d at 1348.
The field of endeavor is determined "by reference to explanations of
the invention's subject matter in the patent application, including the
embodiments, function, and structure of the claimed invention." Bigio, 3 81
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F.3d at 1325. While Appellant's Specification and claims describe and
recite the use of Email to update records stored in a database server, "[t]he
field of endeavor of a patent is not limited to the specific point of novelty,
the narrowest possible conception of the field, or the particular focus within
a given field." Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1001
(Fed. Cir. 2016).
Appellant's Specification describes the technical field of the invention
as broadly relating to databases and that "[a] database server permits data to
be stored, accessed and modified in the form of structured queries." Spec.
,r,r 2, 4. As such, we agree with the Examiner that the field of endeavor is
query processing. Non-Final Act. 3; Ans. 3. Jung is directed to performing
a search with a use restriction. Jung, Title, ,r 1. Jung describes the
performance of this search as including "determin[ing] a search parameter in
association with an operation of an instance of an application, determin[ing]
a search result based on the search parameter, in association with a use
restriction associated with the search result, and provid[ing] the search result
in association with the instance of the application and in association with the
use restriction." Jung, Abstract. Thus, Jung performs a search with a use
restriction by forming a query and processing the query to obtain a set of
search results. See Jung ,r,r 30-34. As such, we agree with the Examiner
that Appellant's application and Jung are both from the same field of
endeavor----query processing. Ans. 3.
We note for emphasis that even if we agreed with Appellant (Appeal
Br. 7) that Jung was from a different field of endeavor, we find Jung is
reasonably pertinent to a particular problem with which the inventor is
involved. Appellant's Specification and claims describe and recite the use
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of queries for retrieving and updating records stored in a database server.
See e.g., Spec. ,r 22 ("A set of records are retrieved by querying the database
server."); ,r 78 ("The 'update database' we service then updates the
corresponding database records using appropriate SQL statements.");
Claim 1. As discussed above, Jung teaches performing a search with a use
restriction by forming a query and processing the query to obtain a set of
search results. See Jung ,r,r 30-34. Thus, Jung is reasonable pertinent to a
particular problem with which the inventor was involved----query processing.
For the foregoing reasons, we are not persuaded the Examiner erred in
finding Jung to be analogous prior art.
Issue 2: Does the combination of Bicioglu, Jung, Bedingfield, and Agarwal
teach or suggest:
propagating the modifications contained in said second
file to said database server, upon receipt of said second file,
wherein said propagating comprises issuing a second structured
query directed to said database server to update said at least one
of said set of records,
wherein said first data value for said first column is
replaced by said second data value in said database server due to
execution of said second structured query in said database server,
as recited in claim 1?
Appellant argues Bedingfield fails to teach the claimed "propagating"
because "[ t ]he updating of web page 106 cannot be equated to the update of
records in the database server since web pages are fundamentally stored as
files and is thus not stored in a column of a database server." Appeal Br. 10.
Appellant argues Bedingfield's teaching of "[u]pdating of log 108 does not
satisfy the claimed feature that the existing/first data value for a column of a
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record be replaced by a new/second data value" because "updating of log
108 at best can be equated to insertion of records, not replacing previously
present data values." Appeal Br. 11. Regarding the teachings of Agarwal,
Appellant argues "[ w ]hile Agarwal discloses updating rows of a data using
'update' queries generally, there is no disclosure or suggestion in Agarwal
that such update queries are issued with respect to any data updates received
by email." Id. at 10.
We do not find Appellant's arguments persuasive. Nonobviousness
cannot be established by attacking the references individually when the
rejection is predicated upon a combination of prior art disclosures. In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The test for
obviousness is not whether the claimed invention is expressly suggested in
any one or all of the references, but whether the claimed subject matter
would have been obvious to those of ordinary skill in the art in light of the
combined teachings of those references. In re Keller, 642 F.2d 413, 425
(CCPA 1981).
Appellant's arguments attack the Examiner's findings from Bedinfield
and Agarwal individually (see Appeal Br. 10-11) when the rejection is
based on the teachings of the combination of references (see Non-Final
Act. 8-10 (citing Bedingfield ,r 14; Agarwal 2:27-30)). Appellant's
arguments fail to address the combined teachings of the references and,
therefore, are unpersuasive of error. See In re Keller, 642 F.2d 413, 425
(CCP A 1981 ). In particular, the alleged deficiencies of each of the
references merely identify features found to be taught by the other reference
and vice versa. For example, although Appellant argues Bedinfield fails to
teach updating records in a database (Appeal Br. 10), the Examiner relies on
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Agarwal, not Bedingfield for teaching updating tables in a database (Ans. 4--
5 (citing Agarwal 2:26-37, 8:29--57). Similarly, the Examiner relied on
Bedingfield, not the argued Agarwal reference, for teaching receiving an
email including updated data. Ans. 4 ( citing Bedingfield ,r 13 ).
Issue 3: Did the Examiner err by finding the combination of Bicioglu, Jung,
Bedingfield, and Agarwal teaches or suggests the limitations recited in
claim 21?
Appellant contends the Examiner erred in finding the cited references
teach or suggest the limitations recited in claim 21 because "[ w ]hile Agarwal
generally teaches queries that can update rows selectively, there is no
disclosure or suggestion in Agarwal that such combination of rows (with
some updated and some not) are those in a file sent for obtaining the
modifications." Appeal Br. 12. Appellant further argues:
[T]he Examiner relies on Jung for the features of claim 21
associated with the second file. As may be readily observed,
when read in view of base claim 1, the second file contains some
values which are sent as a part of the first file, and some new
values (in place of previous values) that are to be written to a
database.
In sharp contrast, the portions of Jung relied upon by the
Examiner disclose incorporating results of searches into a file,
which is prepared for sending. The disclosure of Jung does not
teach or reasonably suggest receiving the claimed second file
having results that are sought to be written to a database.
Appeal Br. 12.
We do not find Appellant's arguments persuasive. Contrary to
Appellant's arguments, the Examiner does not rely upon Agarwal or Jung
for teaching receiving the claimed "second file." Instead, the Examiner
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relies upon Bedingfield for teaching this limitation. Non-Final Act. 8 (citing
Bedingfield ,r 13).
Additionally, Appellant argues:
Bedingfield cannot be modified in accordance with claim 21
since the web page received as a file there entirely replaces the
previous content sought to be updated. In other words,
Bedingfield does not permit portions of the received file to be
selectively used for updating the web page content.
Appeal Br. 12.
We do not find Appellant's argument persuasive. "The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference." In re
Keller, 642 F.2d 413,425 (CCPA 1981). Instead, the relevant issue is "what
the combined teachings of the references would have suggested to those of
ordinary skill in the art." Id. "Combining the teachings of references does
not involve an ability to combine their specific structures." In re Nievelt,
482 F.2d 965,968 (CCPA 1973); see also In re Mouttet, 686 F.3d 1322,
1332 (Fed. Cir. 2012) ("It is well-established that a determination of
obviousness based on teachings from multiple references does not require an
actual, physical substitution of elements."). Appellant's arguments are
based on bodily incorporation of the teachings of Bedingfield and fail to
address what the combined teachings of the references would have
suggested to those of ordinary skill in the art. Appellant's arguments,
therefore, do not persuade us that the Examiner erred.
Issue 4: Did the Examiner err by finding the combination of Bicioglu, Jung,
Bedingfield, and Agarwal teaches or suggests "wherein said second file
contains a respective additional field for each of said set of records, wherein
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the additional field indicates whether the corresponding record has been
modified or not, wherein the additional field for said first record indicates
that said first record has been modified," as recited in claim 22?
Appellant argues Bedingfield' s teaching of maintaining and updating
various fields of an update log does not teach or suggest the claimed
"additional field for each of said set of records" because "all of such fields
are maintained in update log 108" and "none of these fields is used to
determine whether a record in the second file is modified or not by the user,
as a basis for determining which records in the database server are to be
updated." Appeal Br. 13. According to Appellant, claim 22 requires the
"additional field" be received as part of the second file containing the
updated values. Reply Br. 2. Appellant argues Bedingfield does not teach
that the fields of the update log are received as part of the revised copy of
the website but, instead, teaches "the fields/columns of [the] update log of
Bedingfield ... are generated as part of the updating process." Reply Br. 2-
3.
We find Appellant's arguments persuasive. Regarding the disputed
limitations, the Examiner finds:
Bedingfield discloses determin[ing] whether the revised copy
contains any changes to the content on the named part website.
The updating process update[s] the website provided there is a
change in the website. The update log includes the update
sequence number, a last updated date field, etc. is also updated.
Ans. 6 ( citing Bedingfield ,r 14 ). However, the Examiner's findings are
insufficient to show that the revised copy of the website (e.g., a second file
containing the updated values) includes an additional field indicating
whether the revised copy of the website has been modified, as required by
claim 22. As such, the Examiner's findings are insufficient to show that the
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cited references teach or suggest the disputed limitations.
Accordingly, we do not sustain the Examiner's rejection of claim 22.
DECISION
We affirm the Examiner's rejection of claims 1-3, 5-16, and 18-21.
We reverse the Examiner's rejection of claim 22.
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
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