Ex Parte Sasai et al

Board of Patent Appeals and Interferences

Mar 21, 2012

10446941 (B.P.A.I. Mar. 21, 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.
10/446,941 05/29/2003 Kosuke Sasai 54024-048 4339
7590 03/21/2012
McDERMOTT, WILL & EMERY
600 13th Street, N.W.
Washington, DC 20005
EXAMINER
AHN, SANGWOO
ART UNIT PAPER NUMBER
2168
MAIL DATE DELIVERY MODE
03/21/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte KOSUKE SASAI, MASAHIRO HAYAKAWA,
YUJI IKEDA, and NAOAKI SUGANUMA
____________________

Appeal 2009-010976
Application No. 10/446,9411
Technology Center 2100
____________________

Before MARC S. HOFF, CARLA M. KRIVAK, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Minolta Co., Ltd.
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1-21. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appellants’ invention concerns “a database system capable of dealing
with dynamic changes in an event that vary continuously with time.” (Spec.
73, Abstract of the Disclosure). The system provides “a retrieval output in
response to a user’s retrieval request on the basis of retrieval logic. The
retrieval logic is allowed to evolve on the basis of a logical model. The]
logical model establishes a general relationship which leads results from
conditions relating to a group of events that are dealt by a data group.” (id.).
The invention contemplates updating the logical model each time a new
combination between new conditions and corresponding new results is given
(Spec. 8-9, ¶¶ [0063]-[0065]).
Claim 1 is exemplary of the claims on appeal:
Claim 1: A database system comprising:
a data store for storing a data group;
a logical mode1 holding unit for holding a logical model which
represents logical principles in a data retrieval process in an
independent manner from respective data contents of said data group;
a retrieval logic applying unit which creates a retrieval logic
corresponding to a retrieval request on the basis of said logical model,
and obtains a retrieval output corresponding to said retrieval request
by retrieving said data group in accordance with said retrieval logic;
a logic analyzing unit which analyzes a logical path connecting
conditions to corresponding results in a group of events relating to
said data group; and
a logical model updating unit which updates said logical model
so as to be evolved, each time a new combination between new
conditions and corresponding new results is given, on the basis of an
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analysis of a logical path of the new combination carried out by said
logical analyzing unit.

The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Culliss US 6,539,377 B1 Mar. 25, 2003
Russell US 6,598,047 B1 July 22, 2003
Conover US 6,701,314 B1 Mar. 2, 2004
VanDamme US 6,807,545 B1 Oct. 19, 2004
Claims 1-5, 9-18, and 21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Conover in view of VanDamme.
Claims 6-8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Conover in view of VanDamme and Culliss.
Claims 19 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Conover in view of VanDamme and Russell.
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed December 26, 2007), the Reply Brief (“Reply Br.,” filed
May 19, 2008), and the Examiner’s Answer (“Ans.,” mailed March 19,
2008) for their respective details.

ISSUES
Appellants argue, inter alia, that Conover’s retention of documents in
a file, arranged by classification, is not a “logical model” as Appellants
define the term in the Specification (App. Br. 5). The Examiner responds
that the definition from the Specification is not recited in the rejected claims
(Ans. 12).
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Appellants further argue that VanDamme “does not disclose a logical
model, only updating a thesaurus” (App. Br. 6).
Appellant’s contentions and the Examiner’s findings present us with
the following issues:
1. Does the combination of Conover and VanDamme teach or fairly
suggest a logical model which represents logical principles in a data retrieval
process?
2. Does the combination of Conover and VanDamme teach or fairly
suggest a logical model updating unit?

FINDINGS OF FACT
Appellants’ Specification
1. Appellants define their logical model as giving “a global rule which
has a wider range of applications since it represents a ‘functional’
relationship or ‘mapping’ as a model, whereas the retrieval logic 2 gives a
local, temporary rule that is used for obtaining the retrieval results 4 from
the retrieval request 3 at a specific point of time” (Spec. 9,¶ [0063]).
VanDamme
2. VanDamme teaches a method for translating textual data in indices,
using several subject-oriented thesauri (col. 1, ll. 30-31; col. 2, ll. 46-47).
3. VanDamme teaches making a list of index terms that do not occur
in the thesaurus (col. 4, 6-7). “A user or a documentation officer can have a
look at this list, who may then decide what words of this list should be added
to the thesaurus” (col. 4, ll. 8-10).

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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. of Kansas City, 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.”).
The claim terms should be given their broadest reasonable meaning in
their ordinary usage as such claim terms would be understood by one skilled
in the art by way of definitions and the written description. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
The claims, of course, do not stand alone. Rather, they are
part of a “fully integrated written instrument,” . . . consisting
principally of a specification that concludes with the claims. For
that reason, claims “must be read in view of the specification, of
which they are a part” . . . . [T]he specification “is always highly
relevant to the claim construction analysis. Usually, it is
dispositive; it is the single best guide to the meaning of a
disputed term.”

Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc)
(citations omitted).
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ANALYSIS
CLAIMS 1-5, 9-18, AND 21
Each of independent claims 1 and 15 recites “holding a logical model
which represents logical principles,” and “updating] said logical model so
as to be evolved.”
Appellants define the claimed “logical model” in Appellants’
Specification as giving “a global rule which has a wider range of
applications since it represents a ‘functional’ relationship or ‘mapping’ as a
model, whereas the retrieval logic 2 gives a local, temporary rule that is used
for obtaining the retrieval results 4 from the retrieval request 3 at a specific
point of time” (Spec. 9,¶ [0063]) (FF 1). To the extent it is the Examiner’s
position that he may disregard the definition present in Appellants’
Specification, we do not agree. See Phillips, 415 F.3d at 1315. We agree
with Appellants that Conover’s file of documents arranged by classification
does not correspond to the claimed “logical model.”
We further disagree with the Examiner’s finding that VanDamme
teaches updating a logical model. VanDamme teaches a method for
translating textual data in indexes, using several subject-oriented thesauri
(FF 2). VanDamme teaches making a list of index terms that do not occur in
the thesaurus. A user or a documentation officer can have a look at this list,
who may then decide what words of this list should be added to the
thesaurus (FF 3). We agree with Appellants that updating VanDamme’s
thesaurus does not correspond to the claimed “logical model updating unit,”
and that the Examiner has failed to identify any components corresponding
to a logical model updating unit in VanDamme (App. Br. 6).
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We conclude that the Examiner erred in rejecting claims 1-5, 9-18,
and 21 as being unpatentable over Conover in view of VanDamme. We will
not sustain the § 103 rejection.
CLAIMS 6-8, 19, AND 20
Each of claims 6-8, 19, and 20 depends from either independent claim
1 or independent claim 15. We have reviewed the further references to
Culliss and Russell and find that they do not remedy the deficiencies of
Conover and VanDamme.
Accordingly, we will not sustain the rejection of claims 6-8, 19, and
20, for the same reasons expressed supra with respect to parent claims 1 and
15.

CONCLUSION
1. The combination of Conover and VanDamme does not teach or
fairly suggest a logical model which represents logical principles in a data
retrieval process.
2. The combination of Conover and VanDamme does not teach or
fairly suggest a logical model updating unit.

ORDER
The Examiner’s rejection of claims 1-21 is reversed.

REVERSED

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