10432769 (B.P.A.I. Dec. 20, 2011)

Ex Parte Pauly

Board of Patent Appeals and InterferencesDec 20, 2011

10432769 (B.P.A.I. Dec. 20, 2011)

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. 10/432,769 05/28/2003 Duncan Gunther Pauly W0286.70005US00 9445 23628 7590 12/20/2011 WOLF GREENFIELD & SACKS, P.C. 600 ATLANTIC AVENUE BOSTON, MA 02210-2206 EXAMINER SAEED, USMAAN ART UNIT PAPER NUMBER 2166 MAIL DATE DELIVERY MODE 12/20/2011 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 DUNCAN GUNTHER PAULY ____________________ Appeal 2010-005156 Application 10/432,769 1 Technology Center 2600 ____________________ Before SCOTT R. BOALICK, MARC S. HOFF, and CARLA M. KRIVAK, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of claims 1-46 and 69-71. 2 We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appellant‟s invention concerns a method of organizing a database having an index and data. The index is a hierarchical structure of decision nodes, the structure of nodes being navigated during a search until a 1 The real party in interest is Coppereye Limited. 2 Claims 64-68, 84-86, and 91-98 have been cancelled. Claims 47-63, 72- 83, 87-90, and 99-104 stand withdrawn from consideration. Appeal 2010-005156 Application 10/432,769 2 conclusion is reached. The structure is organized such that key symbols are not stored at a node in the structure, and each node has less than three exit paths (Spec. 3). In order to navigate along the index, each decision node visited along a navigation path refers to one or a group of bits within the key. This group of bits is known as a “decision group.” The number of bits in the decision group can be set to include any number of bits between a single bit and all the bits of the key (Spec. 23). Claim 1 is exemplary of the claims on appeal: 1. A computer-implemented method of organizing a database, encoded in a computer-readable storage medium, which in use comprises an index and data and wherein the index is queried using a search criterion comprising at least one key, each key comprising a plurality of bits, in order to locate data matching the search criterion, wherein the index is a hierarchical structure of nodes that is navigated during a search until a conclusion set satisfying the search criterion is reached, and wherein the index is searched by comparing, at each node, a decision group within the search key with a decision value associated with the node to determine whether the decision group is greater or less than the decision value, wherein the number of bits in the decision group can be set to include any number of bits between a single bit and all the bits of the key, wherein at least some of the decision groups comprise a plurality of bits less than all the bits of the key, wherein the decision value associated with each node can be set to a chosen value, and wherein each node has less than three exit paths therefrom, further comprising returning a query result that corresponds to the conclusion set. The Examiner relies upon the following prior art in rejecting the claims on appeal: Ferguson US 5,497,485 Mar. 5, 1996 Watts US 5,629,695 May 13, 1997 Douceur US 6,041,053 Mar. 21, 2000 Martinek US 7,043,641 B1 May 9, 2006 Appeal 2010-005156 Application 10/432,769 3 Claims 1-21, 27, 42-46, and 69-71 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Ferguson in view of Douceur. 3 Throughout this decision, we make reference to the Appeal Brief (“App. Br.,” filed July 22, 2009), the Reply Brief (“Reply Br.,” filed Feb. 4, 2010), and the Examiner‟s Answer (“Ans.,” mailed Dec. 8, 2009) for their respective details. ISSUE Appellant argues, inter alia, that neither Ferguson nor Douceur teach or suggest “wherein the number of bits in the decision group can be set to include any number of bits between a single bit and all the bits of the key” (App. Br. 7). According to Appellant, Ferguson teaches only testing a single bit (the “quit-bit”) to narrow the search range (App. Br. 14). The Examiner, acknowledging this argument, finds that Ferguson‟s teaching of testing a single bit meets the claimed range of “between a single bit and all the bits of the key” (Ans. 19). Appellant‟s contentions, and the Examiner‟s conclusion, present us with the following issue: Does Ferguson or Douceur teach or fairly suggest that the number of bits in the decision group can be set to include any number of bits between a single bit and all the bits of the key? 3 With the Examiner‟s withdrawal of the previous § 101 rejection, claims 22- 26 and 28-41 no longer stand rejected on any basis. Appeal 2010-005156 Application 10/432,769 4 FINDINGS OF FACT Ferguson 1. Ferguson teaches that each decision-bit divides a search range into left and right parts (col. 3, ll. 45-46). 2. A first bit (“quit-bit”) in the search key being sought is tested (col. 3, ll. 46-49). 3. If the “quit-bit” is on, then the right, or greater value, part becomes the new search range (col. 3, ll. 49-50). 4. Otherwise, the left, or lesser value, part becomes the new search range (col. 3, ll. 51-52). PRINCIPLES OF LAW Section 103(a) forbids issuance of a patent when “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, (3) the level of skill in the art, and (4) where in evidence, so-called secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR, 550 U.S. at 407, (“While the sequence of these questions might be reordered in any particular case, the [Graham] factors continue to define the inquiry that controls.”) Appeal 2010-005156 Application 10/432,769 5 ANALYSIS Claims 1 and 71 are the appealed independent claims. Both claims recite “wherein the number of bits in the decision group can be set to include any number of bits between a single bit and all the bits of the key.” The Examiner finds that Ferguson has “decision bits” within leaf node entries (Ans. 19). Each decision bit divides a search range into left and right parts (FF 1). A first bit (“quit-bit”) in the search key being sought is tested (FF 2). If the “quit-bit” is on, then the right, or greater value, part becomes the new search range (FF 3). Otherwise, the left, or lesser value, part becomes the new search range (FF 4). According to the Examiner, Ferguson‟s teaching of testing a single decision bit, i.e., the quit-bit, meets the claim recitation at issue (Ans. 19). We disagree with the Examiner‟s finding that Ferguson teaches this limitation. Appellant argues, and we agree, that “[t]he meaning of claim 1 and 71 is therefore that the designer has the choice of setting the number of bits in the decision group to include any number of bits between a single bit and all the bits of the key, NOT that the decision group includes „a set between a single bit and all the bits‟ as the Examiner suggests” (App. Br. 23). Ferguson‟s bare teaching of testing only the “quit-bit” fails to teach the “setting” portion of the claim limitation. The Examiner cites to no other disclosure in Ferguson, and we find none, that the number of bits in the decision group can be set, i.e., varied. Douceur also contains no teaching that remedies this deficiency of Ferguson. The Examiner‟s combination of Ferguson and Douceur fails to teach all the elements of the invention recited in independent claims 1 and 71. Accordingly, we conclude that the Examiner erred in rejecting claims 1-21, Appeal 2010-005156 Application 10/432,769 6 27, 42-46, and 69-71 under § 103 over Ferguson in view of Douceur, and we will not sustain the rejection. CONCLUSION Neither Ferguson nor Douceur teach or fairly suggest that the number of bits in the decision group can be set to include any number of bits between a single bit and all the bits of the key. ORDER The Examiner‟s rejection of claims 1-21, 27, 42-46, and 69-71 is reversed. REVERSED kis