Ex Parte LI et al

Patent Trial and Appeal Board

Oct 10, 2012

10643628 (P.T.A.B. Oct. 10, 2012)

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.
10/643,628 08/18/2003 Wei Li 50277-2250 4451
42425 7590 10/10/2012
HICKMAN PALERMO TRUONG BECKER BINGHAM WONG/ORACLE
1 Almaden Boulevard
Floor 12
SAN JOSE, CA 95113
EXAMINER
SAEED, USMAAN
ART UNIT PAPER NUMBER
2169
MAIL DATE DELIVERY MODE
10/10/2012 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WEI LI, JIANSHENG HUANG, and ARI MOZES
____________

Appeal 2009-014144
Application 10/643,6281
Technology Center 2100
____________

Before JEAN R. HOMERE, CAROLYN D. THOMAS, and
JAMES R. HUGHES, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

1 The real party in interest is Oracle International Corporation.
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INTRODUCTION
Appellants request rehearing of the Patent Trial and Appeal Board’s
(“Board”) Decision mailed July 23, 2012 (“Decision”), in which we
affirmed the rejections of (1) claims 1, 2, 4-7, 12-15, 17-20, and 25-28 under
35 U.S.C. § 103(a) as being unpatentable over Agrawal (US 6,324,533 B1,
Nov. 27, 2001) and Chen (US Patent Pub. 2002/0087561 A1, Jul. 4, 2002);
(2) claims 3, 9-11, 16, and 22-24 under 35 U.S.C. § 103(a) as being
unpatentable over Agrawal, Chen, and Bayardo (US 6,138,117, Oct. 24,
2000); and (3) claims 29 and 30 under 35 U.S.C. § 103(a) as being
unpatentable over Agrawal, Chen, Bayardo, and Tamura (US Patent Pub.
2002/0059191 A1, May 16, 2002).

ANALYSIS
In their Request for Rehearing (“Request”), Appellants allege that the
following points were based on a misunderstanding by the Board: (1) “a
group-by query is a query, not a function” (Req. 2) and “Agrawal’s group-by
query is not identified by a construct that extends a database language” (Req.
3); (2) “the Gather table function neither counts nor returns frequent
itemsets” (Req. 3); (3) “[i]n neither table function does it make sense to
accept a cursor as input” (Req. 5); and (4) “claims 9-11 and 29 are not
strikingly similar, even conceptually, to the cited portions” (Req. 5).
Appellants’ representative claim 1 explicitly recites “parsing a database
statement to detect . . . a construct that extends the particular language, [and]
identifies a function that counts and returns frequent itemsets given a cursor
as input to the function.” (Claim 1; Decision 2).

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(1) Group-by query is not a function
Specifically, Appellants contend that “Agrawal appreciates this
distinction in that Agrawal discloses both queries that are not functions, and
functions that are not queries. Examples of the latter are the Gather and
Comb-K table functions” (Req. 2).
As conceded above by Appellants and highlighted in our Decision
(Decision 4), undisputedly Agrawal does indeed disclose “functions.” Thus,
Appellants’ argument that “Agrawal’s group-by query is not a function” is
moot given that it is undisputed that Agrawal’s at least discloses “Gather and
Comb-k table functions,” both of which were highlighted in our Decision on
page 4.
Appellants further contend that claim 1 “relies on [a] construct that
both identifies a function and extends a particular database language” (Req.
3)(emphasis added). As our Decision has clearly shown that Agrawal
discloses a construct that identifies a function, Appellants now attempt to
introduce belated arguments regarding the limitation extends a particular
database language. Appellants have failed to cite where this argument was
first made, as we do not find such an argument in the principal Brief. Such
arguments at this stage of the prosecution are inappropriate and will not be
considered. 37 C.F.R. § 41.52 (a)(1). A request for rehearing “‘must state
with particularity the points believed to have been misapprehended or
overlooked by the Board’” and “must specifically recite ‘the points of law or
fact which appellant feels were overlooked or misapprehended by the
Board.’” Ex Parte Quist, 95 USPQ2d 1140, 1141 (BPAI 2010)
(precedential) (quoting MPEP § 1214.03). Appellants have not specifically
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pointed out any where the Board overlooked or misapprehended this
particular point in its Decision.
Therefore, these belated arguments are technically waived. See Ex
parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[T]he
reply brief [is not] an opportunity to make arguments that could have been
made in the principal brief on appeal to rebut the Examiner's rejections, but
were not.”). Similarly, the “Request for Rehearing” is not an opportunity to
make arguments that could have been made in the principal brief on appeal.
Appellants could have presented the new argument in support of claim 1 in
the Appeal Brief, such that we would have had benefit of the Examiner’s
evaluation of the argument in the responsive Answer. Appellants do not
explain what good cause there might be to consider the new argument now.
Appellants’ new argument is thus untimely and has, accordingly, not been
considered. See Ex parte Borden, 93 USPQ2d 1473 (BPAI 2010)
(informative).
Furthermore, we decline to examine the claims sua sponte, looking for
distinctions over the prior art. Cf. In re Baxter Travenol Labs., 952 F.2d
388, 391 (Fed. Cir. 1991) (“It is not the function of this court to examine the
claims in greater detail than argued by an appellant, looking for [patentable]
distinctions over the prior art.”). See also Ex parte Belinne, No. 2009-
004693, 2009 WL 2477843 at *3-4 (BPAI Aug. 10, 2009) (informative). It
is Appellants’ responsibility to present clear arguments as to why the
Examiner erred. We find Appellants’ apparent contention that we
overlooked arguments that the construct extends a particular database
language unpersuasive. Furthermore, we find no misapprehension with our
understanding of a “function.”
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(2) Gather table function neither counts nor returns frequent itemsets
Specifically, Appellants contend that “Agrawal’s Gather table
function merely collects all the items of a transaction and outputs a record
for the transaction” (Req. 3). Appellants further contend that “[a]lthough
Comb-K returns one or more k-item combinations from a transaction, this is
far from counting frequent itemsets” (Req. 4).
Here, we start by again highlighting various concessions made by
Appellants (see Decision 4). Previously, Appellants “conceded that the
GatherComb-K function is being used for counting” (Reply Br. 3). Now,
Appellants are asserting that “Comb-K returns one or more k-item
combinations”, but is “far from counting frequent itemsets” (Req. 4).
Although Appellants are flip-flopping on their views of Agrawal, we shall
stand steadfast with our findings that Agrawal discloses both a function that
counts and returns frequent itemsets. As stated in our Decision, Agrawal’s
GatherJoin approach “is based on the use of table functions . . . and counts
the support of the itemsets . . . and outputs a record for each transaction”
(Decision 4).
Appellants have further conceded that Agrawal’s disclosed Gather and
Comp-K are part of a database statement that counts and returns frequent
itemsets. (see Reply Br., 3; see also Req. 4.) In other words, Appellants
have identified a function (i.e., the database statement) in Agrawal that
performs the claimed “counts and returns” feature, yet Appellants argue that
the disclosed “Gather and Comp-K” functions are only a portion of such a
database statement (Req. 4). As noted in our Decision, whether the Gather
and Comp-K are merely parts of the database statement as opposed to the
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entire database statement is irrelevant as claim 1 does not limit the claimed
“function” to any particular steps. Claim 1 merely requires “a function that
counts and returns.”
“In the patentability context, claims are to be given their broadest
reasonable interpretations. . . . [L]imitations are not to be read into the
claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993) (citations omitted). A claim meaning is reasonable if one of
ordinary skill in the art would understand the claim, read in light of the
specification, to encompass the meaning. See In re American Academy of
Science Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004). Any special
meaning assigned to a term “must be sufficiently clear in the specification
that any departure from common usage would be so understood by a person
of experience in the field of the invention.” Multiform Desiccants Inc. v.
Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998). In our Decision, we
found that the claimed “function” was not limited as argued (Decision 5).
Thus, Appellants’ arguments are not persuasive that the Board
misapprehended or overlooked any points in our original decision.

(3) Accept A Cursor As Input
Appellants contend that “[i]n nether table function does it make sense
to accept a cursor as input” (Req. 5). In our Decision, we found that there is
no requirement that the problem solved by the secondary reference (e.g.,
Chen) be discussed by the primary reference (e.g., Agrawal) to apply the
teachings of the secondary reference in a rejection under 35 U.S.C. § 103
(Decision 5).
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Here, the Examiner directed our attention to Chen’s teachings of a
“cursor as input” and how such a cursor is used by the function (Ans. 5-6;
23-25). The Supreme Court has held that in analyzing the obviousness of
combining elements, a court need not find specific teachings, but rather may
consider “the background knowledge possessed by a person having ordinary
skill in the art” and “the inferences and creative steps that a person of
ordinary skill in the art would employ.” See KSR Int'l Co. v. Teleflex Inc.,
127 S. Ct. 1727, 1740-41 (2007). To be nonobvious, an improvement must
be “more than the predictable use of prior art elements according to their
established functions,” and the basis for an obviousness rejection must
include an “articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness.” Id. The Examiner has found actual
teachings in the prior art of using a cursor as input and has provided a
rationale for the combination with Agrawal. Further, the teachings suggest
that the combination involves the predictable use of prior art elements
according to their established functions. Accordingly, we found in our
Decision that the Examiner had provided sufficient motivation for modifying
Agrawal with the teachings of Chen. Thus, Appellants’ arguments are not
persuasive that the Board misapprehended or overlooked any points in our
original decision.

(4) Claims 9-11 and 29 are not strikingly
similar to the cited portions

In our Decision (Decision 6-7), regarding claims 9-11 and 29, we
found that the recited “specify a minimum length” (e.g., claim 9) is
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strikingly similar (at least conceptually) to Bayardo’s teaching of frequent
itemsets being more than 10 inches length (see Bayardo, col. 9, ll. 56-59);
the recited “specify a maximum length” (e.g., claim 10) is strikingly similar
(at least conceptually) to Bayardo’s teaching of frequent patterns being
relatively short, e.g., less than 10 items (see Bayardo, col. 1, ll. 24-26); the
recited “specify a set of one or more included items” (e.g., claim 11) is
strikingly similar (at least conceptually) to Agrawal’s teaching of “selecting
distinct first items in the candidate itemsets using a subquery” (see Agrawal,
col. 3. ll. 3-4) ; and the recited “specify a set of one or more excluded items”
(e.g., claim 29) is strikingly similar (at least conceptually) to Tamura’s “is
excluded from the candidate k-itemset” (see Tamura, 1: ¶ [0021]).
We found that each of these cited statements (read in their entirety as
cited) specified a criteria for performing a process and included a
“minimum, maximum, short, etc., requirement. For example, “more than 10
inches length” denotes a minimum length of, e.g., 11 inches for the criteria
to be met. Appellants’ arguments are more appropriate for filing a Reply
Brief as no showing is made of any points misapprehended or overlooked in
our original decision based upon the administrative record at the time of the
decision. Therefore, Appellants’ arguments are unpersuasive that the Board
misapprehended or overlooked any points in our original decision.

DECISION
Accordingly, we have granted Appellants’ Request to the extent that
we have reconsidered the original Decision but have DENIED it with respect
to making any changes to the Decision.
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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).

REHEARING DENIED

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