Ex Parte Liu et al

Patent Trial and Appeal Board

Mar 19, 2013

10810152 (P.T.A.B. Mar. 19, 2013)

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.
10/810,152 03/26/2004 INV001Zhen Liu 50277-2416 8375
42425 7590 03/20/2013
HICKMAN PALERMO TRUONG BECKER BINGHAM WONG/ORACLE
1 Almaden Boulevard
Floor 12
SAN JOSE, CA 95113
EXAMINER
AHLUWALIA, NAVNEET K
ART UNIT PAPER NUMBER
2166
MAIL DATE DELIVERY MODE
03/20/2013 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 ZHEN LIU, MURALIDHAR KRISHNAPRASAD,
ANAND MANIKUTTY, RAVI MURTHY, JAMES WARNER,
THOMAS H. CHANG, VIKAS ARORA, and SUSAN KOTSOVOLOS

___________

Appeal 2010-008660
Application 10/810,152
Technology Center 2100
____________

Before ERIC B. CHEN, TREVOR M. JEFFERSON, and LARRY J. HUME,
Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-008660
Application 10/810,152

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This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-50, all the claims pending in the application. We reverse and enter
a new ground of rejection pursuant to our authority under 37 C.F.R.
§ 41.50(b).

STATEMENT OF THE CASE
Appellants’ invention relates to techniques for managing XML data
associated with multiple execution units. An XML type value produced in a
particular form by one execution unit is consumed by another execution unit.
Annotating information sent to an XML producer execution unit causes the
XML type value to be transformed into a canonical form that can be shared
by all relevant execution units. (Abstract.)
Claim 1 is exemplary, with disputed limitations in italics:
1. A method comprising the computer-implemented steps
of:
detecting that a portion of a query execution plan to service a
request for data will cause a first producer execution unit that will
perform said portion, according to said query execution plan, to
generate XML data for use by a second consumer execution unit in
performing another portion of said query execution plan;
generating information to send to said first execution unit to
cause said first execution unit to perform said portion of said query
execution plan;
wherein said information would cause said first execution unit
to generate said XML data in a first form that cannot be used by said
second execution unit; and
annotating said information with an annotation that causes
XML data generated by said first execution unit to be transformed to a
canonical form for use by said second execution unit in performing
said another portion of said query execution plan,
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wherein said annotating causes removal of one or more
references to execution unit-specific data that is accessible by the first
execution unit but that is not accessible by the second execution unit.

Claims 1-50 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Fernandez (U.S. Patent No. 6,785,673 B1; Aug. 31, 2004).

ANALYSIS
We are persuaded by Appellants’ arguments (App. Br. 9-11; see also
Reply Br. 1-3) that Fernandez does not describe the limitation “detecting
that a portion of a query execution plan to service a request for data will
cause a first producer execution unit that will perform said portion,
according to said query execution plan, to generate XML data for use by a
second consumer execution unit in performing another portion of said query
execution plan,” as recited in claim 1.
The Examiner found that a query planner of Fernandez, which
partitions a view tree into subtrees such that one SQL query is generated for
each subtree, corresponds to the limitation “detecting that a portion of a
query execution plan to service a request for data will cause a first producer
execution unit that will perform said portion, according to said query
execution plan, to generate XML data for use by a second consumer
execution unit in performing another portion of said query execution plan.”
(Ans. 3-4, 14-15.) We do not agree.
Fernandez “relates to converting relational data into XML (eXtensible
Markup Language) on the Internet.” (Col. 1, ll. 19-21.) Figure 6 of
Fernandez illustrates an architecture of a query planner and a translator.
(Col. 4, ll. 15-16.) Fernandez explains that:
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The planner partitions a view tree into one or more subtrees; for
each subtree, one SQL query is generated. The translator
submits the SQL queries to the underlying RDBMS, reads in
the result relations, and constructs one integrated (logical)
relation. A tuple in the integrated relation represents a path
from the root element to a leaf element in the result XML
document. The XML document is constructed by re-nesting the
tuples in the result relation and tagging each element.
(Col. 38, ll. 16-23; see also Fig. 6.)
However, the Examiner has not adequately identified which features
from the Figure 6 embodiment of Fernandez correspond to the claimed “first
producer execution unit” and the claimed “second consumer execution unit,”
much less the limitation “to generate XML data for use by a second
consumer execution unit in performing another portion of said query
execution plan.” Thus, the Examiner has provided insufficient evidence to
support a finding that Fernandez discloses the limitation “detecting that a
portion of a query execution plan to service a request for data will cause a
first producer execution unit that will perform said portion, according to said
query execution plan, to generate XML data for use by a second consumer
execution unit in performing another portion of said query execution plan.”
Accordingly, we do not sustain the rejection of independent claim 1
under 35 U.S.C. § 102(e). Claims 2-38 depend from independent claim 1.
We do not sustain the rejection of claims 2-38 under 35 U.S.C. § 102(e) for
the same reasons discussed with respect to independent claim 1.
Independent claims 39, 45, and 50 recite limitations similar to those
discussed with respect to independent claim 1. We do not sustain the
rejection of claims 39, 45, and 50, as well as dependent claims 40-44 and 46-
49, for the same reasons discussed with respect to claim 1.

Appeal 2010-008660
Application 10/810,152

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NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b)
We enter the following new ground of rejection:
Claims 20-38 and 42-44 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
Claims 20-38 and 42-44 recites a “computer-readable medium.”
Appellants’ Specification discloses that:
The term “computer-readable medium” as used herein refers to
any medium that participates in providing instructions to
processor 204 for execution. Such a medium may take many
forms, including but not limited to, non-volatile media, volatile
media, and transmission media. . . . Transmission media can
also take the form of acoustic or light waves, such as those
generated during radio-wave and infra-red data
communications.
(Spec. ¶ [0040] (emphasis added).) Thus, under the broadest reasonable
interpretation, the “computer-readable medium” of claims 20-38 and 42-44
encompasses transitory signals. Accordingly, claims 20-38 and 42-44 are
directed to non-statutory subject matter. See In re Nuijten, 500 F.3d 1346,
1356-57 (Fed. Cir. 2007) (“A transitory, propagating signal like Nuitjen’s is
not a ‘process, machine, manufacture, or composition of matter.’ . . . [T]hus,
such a signal cannot be patentable subject matter.”); see also M.P.E.P.
§ 2106 (I) (“Non-limiting examples of claims that are not directed to one of
the statutory categories . . . [include] transitory forms of signal transmission
(for example, a propagating electrical or electromagnetic signal per se.”)).

This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides that a “new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
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37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of proceedings (37 C.F.R. § 1.197 (b)) as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner ….
(2) Request rehearing. Request that the proceeding be
reheard under 37 C.F.R. § 41.52 by the Board upon the same
record ….

DECISION
The Examiner’s decision to reject claims 1-50 is reversed.
New ground of rejection has been entered under 37 C.F.R. § 41.50(b)
for claims 20-38 and 42-44, rejected under 35 U.S.C. § 101 as being directed
to non-statutory subject matter.

REVERSED
37 C.F.R. § 41.50(b)

msc