Ex Parte Sayal et al

Patent Trial and Appeal Board

Oct 23, 2012

10918587 (P.T.A.B. Oct. 23, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MEHMET SAYAL, FABIO CASATI,
and MING-CHIEN SHAN
____________________

Appeal 2010-000501
Application 10/918,587
Technology Center 2100
____________________

Before ERIC S. FRAHM, KALYAN K. DESHPANDE, and BRYAN F.
MOORE, Administrative Patent Judges.

DESHPANDE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-000501
Application 10/918,587

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STATEMENT OF CASE1
The Appellants seek review under 35 U.S.C. § 134(a) of a final
rejection of claims 1-25, the only claims pending in the application on
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

INVENTION
The Appellants invented a method and system for automatically
analyzing a data field and automatically generating a star schema. See
Abstract.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below [bracketed matter and some
paragraphing added]:
1. A method, comprising:
[1] categorizing a data field into one of a plurality of data
field types, one of the data field types being an enumeration
type data field;
[2] developing dimensions for a table that represents an
initial star schema design using the categorization of the data
field;
[3] detecting functional dependencies between the data field
and other data fields; and
[4] refining the initial star schema design by modifying the
table based on detected functional dependencies.

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Apr. 10, 2009) and Reply Brief (“Reply Br.,” filed Sep. 22, 2009),
and the Examiner’s Answer (“Ans.,” mailed Jul. 23, 2009), and Final
Rejection (“Final Rej.,” mailed Nov. 14, 2008).
Appeal 2010-000501
Application 10/918,587

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REFERENCES
The Examiner relies on the following prior art:
Ono
Potter
Sommerfield
Wybenga
US 6,721,760 B1
US 2005/0010550 Al
US 2005/0060340 Al
US 7,362,763 B2
Apr. 13,2004
Jan. 13,2005
Mar. 17,2005
Apr. 22, 2008

NA9309123, IBM_TDB, “Software Compiler for Analyzing and Measuring
Programs,” 1 Sept. 1993, Acc. No. NA9309123, IBM Technical Disclosure
Bulletin, pp. 123-128 (hereinafter “IBM")

REJECTIONS2
Claims 22-25 stand rejected under 35 U.S.C. § 101 as being directed
to non-statutory subject matter. Ans. 3-4.
Claims 1, 4-11, 16, 18, and 22 stand rejected under 35 U.S.C. § 102(e)
as being anticipated by Potter. Ans. 4-8.
Claims 2-3, 12, 19-20, and 23-24 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Potter and
Sommerfield. Ans. 8-11.
Claims 13 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Potter and IBM. Ans. 11-12.
Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Potter and Ono. Ans. 12-13.

2 The Appellants point out the objection to the Specification and request that
the objection be held in abeyance until the outcome of the appeal. We note
that the Examiner’s objection is reviewable by petition under 37 C.F.R.
§ 1.181, see MPEP § 608.04, and thus is not within the jurisdiction of the
Board. See In re Mindick, 371 F.2d 892, 894 (CCPA 1967). As such, we
will not further consider this issue.
Appeal 2010-000501
Application 10/918,587

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Claims 15, 21, and 25 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Potter and Wybenga. Ans. 13-
14.

ISSUES
The issue of whether the Examiner erred in rejecting claims 22-25
under 35 U.S.C. § 101 as being directed towards non-statutory subject
matter turns on whether a “tangible computer readable medium” includes
signal-bearing or transmission mediums.
The issue of whether the Examiner erred in rejecting claims 1-25 as
anticipated by or obvious over the cited prior art turns on whether Potter
describes refining the initial star schema design by modifying the table based
on detected functional dependencies.

ANALYSIS
Claims 22-25 rejected under 35 U.S.C. § 101
Claim 22 is directed to a “tangible computer readable medium”
storing a plurality of modules. The Examiner finds that the claim is directed
to non-statutory subject matter because the recited tangible computer
readable medium includes signal bearing or transmission mediums. Ans. 3.
The Appellants contend that the claim is directed to statutory subject matter
because one of ordinary skill in the art would recognize that the tangible
medium may include a storage medium such as a hard drive, random access
memory, and the like, and thus would not interpret a tangible medium to be
inclusive of a signal. App. Br. 9 and Reply Br. 3.
Appeal 2010-000501
Application 10/918,587

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We disagree with the Appellants. The specification does not clearly
define “tangible” or a “computer readable medium.” The broadest
reasonable interpretation of a “tangible computer readable medium”
encompasses a transitory, propagating signal. Given that a medium can be
both tangible and transitory, we agree with the Examiner’s finding that a
“tangible computer readable medium” as broadly claimed encompasses a
transitory, propagating signal. Transitory embodiments are not directed to
statutory subject matter. Examples include physical but transitory forms of
signal transmission such as radio broadcasts, electrical signals through a
wire, and light pulses through a fiber-optic cable, that convey encoded
information. In re Nuijten, 500 F.3d 1346, 1353-54 (Fed. Cir. 2007).

Accordingly, we find the Examiner did not err in rejecting
independent claim 22, and claims 23-25 which depend therefrom, under 35
U.S.C. § 101 as directed to non-statutory subject matter.

Claims 1, 4-11, 16, 18, and 22 rejected under 35 U.S.C. § 102(e) as being
anticipated by Potter
The Appellants contend that Potter does not disclose “refining the
initial star schema design by modifying the table based on detected
functional dependencies,” as recited by limitation [4] of claim 1 and as
similarly recited by claims 18 and 22. App. Br. 16-17. The Appellants
specifically argue that Potter only discloses changing the representation of
the star schema and fails to describe refining the star schema design. App.
Br. 17.
Appeal 2010-000501
Application 10/918,587

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We agree with the Appellants. Limitation [4] requires refining the
initial star schema design by modifying the table based on functional
dependencies. The Examiner finds that Potter teaches formatting for display
purposes and translation, “wherein translation meets refinement.” Ans. 17
(citing Potter ¶¶ 0042 and 0308). The Examiner further finds that Potter
describes formatting for date purposes, which “necessarily and always meets
refining” in the context of databases. Ans. 18 (citing Potter ¶ 0308).
Although Potter describes formatting for display or date purposes and
translation, the Examiner fails to provide any evidence or rationale to
support the statements that these teachings “necessarily and always meets
refining” in the context of databases. That is, formatting does not inherently
require refining. As such, we find no evidence that Potter’s formatting and
translation includes refining an initial star schema design as claimed.
Since Potter fails to disclose this limitation, the reference does not
anticipate independent claims 1, 18, and 22. Dependent claims 4-11 and 16
incorporate this same subject matter and therefore we do not sustain the
rejection of these claims for the same reasons. Since this issue is dispositive
as to the prior art rejections against these claims, we need not reach the
remaining arguments raised by the Appellants against these rejections.

Claims 2-3, 12-15, 17, 19-21, and 23-25 rejected under 35 U.S.C. § 103(a)
The Appellants contend that the Examiner erred in rejecting claims 2-
3, 12-15, 17, 19-21, and 23-25 as obvious over the prior art for the same
reasons asserted supra in support of claims 1, 4-11, 16, 18, and 22. We
agree with the Appellants. The Appellants’ arguments were found to be
persuasive supra and are persuasive here for the same reasons.
Appeal 2010-000501
Application 10/918,587

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CONCLUSIONS3
The Examiner did not err in rejecting claims 22-25 under 35 U.S.C.
§ 101 as being directed towards non-statutory subject matter.
The Examiner erred in rejecting claims 1-25 as anticipated by or
obvious over the cited prior art.

DECISION
To summarize, our decision is as follows:
 The rejection of claims 22-25 under 35 U.S.C. § 101 is sustained.
 The rejection of claims 1, 4-11, 16, 18, and 22 under 35 U.S.C.
§ 102(e) as anticipated by Potter is not sustained.
 The rejection of claims 2-3, 12, 19-20, and 23-24 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Potter and
Sommerfield is not sustained.
 The rejection of claims 13 and 14 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Potter and IBM is not sustained.
 The rejection of claim 17 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Potter and Ono is not sustained.

3 We have decided the appeal before us. However, should there be further
prosecution of claims 1-17, the Examiner's attention is directed to 35 U.S.C.
§ 101 and U.S. Patent & Trademark Office, Interim Guidance for
Determining Subject Matter Eligibility for Process Claims in View of Bilski
v. Kappos, 75 Fed. Reg. 43,922 (July 27, 2010). The Examiner is invited to
determine whether the steps of this method satisfy the machine-or-
transformation test and whether this process is directed towards an abstract
idea.
Appeal 2010-000501
Application 10/918,587

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 The rejection of claims 15, 21, and 25 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Potter and Wybenga is not
sustained.

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) (2011).

AFFIRMED-IN-PART

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