Ex Parte Sedlar

Board of Patent Appeals and Interferences

Aug 31, 2007

09571508 (B.P.A.I. Aug. 31, 2007)

The opinion in support of the decision being entered today is not binding precedent
of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ERIC SEDLAR
____________

Appeal 2007-2066
Application 09/571,5081
Technology Center 2100
____________

Decided: August 31, 2007
____________

Before MURRIEL E. CRAWFORD, LINDA E. HORNER, and DAVID B.
WALKER, Administrative Patent Judges.

WALKER, Administrative Patent Judge.

DECISION ON APPEAL

1 The application claims the benefit under 35 U.S.C. § 119(e) of U.S. Patent
Application No. 60/147,538, filed on August 5, 1999.
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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final
rejection of claims 1-6. We have jurisdiction under 35 U.S.C. § 6(b) (2002). We
reverse.
THE INVENTION
Appellant claims a system and method which implement an operating
system file system using a database system (Specification 3:12-13). Claim 1,
reproduced below, is representative of the subject matter on appeal.
1. A method for accessing data stored in a database, the
method comprising the steps of:
an application making one or more calls to an
operating system to access a file;
wherein said operating system includes routines
which implement an operating system file system;
wherein said one or more calls are made to said
routines which implement said operating system file
system;
in response to said one or more calls, issuing one
or more database commands to a database server that
manages said database;
said database server executing said database
commands to retrieve said data from said database;
generating said file from said data; and
providing said file to said application.

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THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Adair US 5,257,366 Oct. 26, 1993
Irwin US 5,566,331 Oct. 15, 1996
Schuyler US 5,832,526 Nov. 3, 1998
Domenikos US 6,115,741 Sep. 5, 2000
Gainer US 6,321,219 B1 Nov. 20, 2001
Doyle US 6,438,550 B1 Aug. 20, 2002

The following rejections are before us for review.
1. Claims 1, 2, 4, and 5 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Schuyler, Gainer, Adair, and Domenikos.
2. Claims 3 and 6 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Schuyler, Gainer, Adair, and Domenikos in further view of Irwin and Doyle.
ISSUE
The issue before us is whether Appellant has shown that the Examiner erred
in rejecting the following claims under 35 U.S.C. 103(a): (1) claims 1, 2, 4, and 5
as unpatentable over Schuyler, Gainer, Adair, and Domenikos; and (2) claims 3
and 6 as unpatentable over Schuyler, Gainer, Adair, and Domenikos in further
view of Irwin and Doyle. The correctness of the above rejections turns on whether
any of the cited references teach generating a file from data retrieved from a
database.
Rather than repeat the arguments of Appellant and the Examiner, we make
reference to the Briefs and the Answer for their respective details. Only those
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arguments actually made by Appellant have been considered in this decision.
Arguments which Appellant could have made but chose not to make in the Briefs
have not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2004).

FINDINGS OF FACT
We find the following enumerated findings to be supported by at least a
preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427, 7
USPQ2d 1152, 1156 (Fed. Cir. 1988) (explaining the general evidentiary standard
for proceedings before the Office).

1. Gainer discloses an operating system including routines which implement
an operating system file system (Gainer, col. 6, ll. 32-38). It describes a
conventional process for an application to request files via the operating
system:
Any application program 330 may request a particular
file service in an entirely conventional manner by issuing
a standard API (application program interface) to I/O
manager 310. Manager 310 processes the API and
ultimately issues a request to a storage device 330 that
contains data for satisfying the request. The 110
manager processes this data, and either returns it to [the]
requesting program 310 or uses it to produce some other
reply.
(Gainer, col. 6, ll. 45-53) (emphasis in original).
2. Gainer further describes the file indexer of the Enterprise Edition of
Windows NT, which continually updates a relational database holding
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certain characteristics of all the objects in the file structure. The
database can also employ a database to index file contents. A search
engine is used to parse a query at an insertion point and then a DBMS
server redirects the query to the relational database of the file indexer
(Gainer, col. 7, ll. 43-53, Fig. 3). The ability of DBMS servers to redirect
queries to other programs, such as to the file indexer, is described as
conventional (Gainer, col. 7, ll. 40-42).
3. Gainer teaches that the file structure directories themselves can form a
database (Gainer, col. 9, ll. 2-3). The database can be used to return the
file objects, including links to the location of the files, for those files that
satisfy a query (Gainer, col. 9, ll. 7-23). The file system retrieves the file
from its actual location and returns it to the requesting application in a
conventional manner (Gainer, col. 9, ll. 43-46). Gainer does not teach
generating a file from data retrieved from a database (Gainer, passim).
4. Adair teaches a mechanism by which application programs executing on
one computer can exploit the full services of a DBMS running on a
different computer, which potentially operates in a different computer
environment (Adair, col. 2, ll. 51-55). Database commands are sent from
the application program via a program or device at the remote computer
of the DBMS to the DBMS (Adair, col. 3, ll. 13-17).
5. In one example, Adair teaches that, in response to a Database Interface
Function call, the DBMS returns data to the Database Interface Function,
which returns the data to the application program (Adair, col. 30, ll. 20-
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37). It does not teach generating a file from data retrieved from a
database (Adair, passim).
6. Domenikos teaches generating an application information file that is
representative of files associated with the application program
(Domenikos, col. 4, ll. 53-55), and returning requested files to the OS file
system in response to the file system request (Domenikos, col. 18, ll. 2-
4). It does not teach generating a file from data retrieved from a database
(Domenikos, passim).
7. Schuyler teaches a method and apparatus for reconstructing files from the
slack space of file storage structures (Schuyler, col. 1, ll. 8-16). It does
not teach generating a file from data retrieved from a database (Schuyler,
passim).
8. Irwin teaches a mass storage system that stores and retrieves file systems
for an associated plurality of data processors (Irwin, col. 1, ll. 6-8). The
mass storage maintains each individual file system as a single bitfile,
rather than as a plurality of files, and maintains only the mapping
information sufficient to identify the physical archival location of the file
system bitfile (Irwin, col. 3, ll. 3-7).
As each datafile is requested, the mass storage system
uses the retrieved physical memory storage location
information to transmit commands to the data archival
storage device on which the data file is stored to cause it
to stage (copy) the requested data file to a high speed
direct access storage device for access by the client data
processor.
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(Irwin, col. 4, ll. 28-34). Irwin does not teach generating a file from data
retrieved from a database (Irwin, passim).
9. Doyle teaches a method and apparatus for client authentication and/or
application configuration using smart cards (Doyle, col. 1, ll. 7-12). It
does not teach generating a file from data retrieved from a database
(Schuyler, passim).

PRINCIPLES OF LAW
“Section 103 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., 127 S.Ct. 1727, 1734, 82 USPQ2d 1385, 1391 (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, 148 USPQ 459, 467 (1966). See
also KSR, 127 S.Ct. at 1734, 82 USPQ2d at 1391 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors continue
to define the inquiry that controls.”).
In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the initial
burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d
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1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). See also In re Piasecki, 745
F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). Only if this initial burden
is met does the burden of coming forward with evidence or argument shift to the
appellant. Id. at 1445, 24 USPQ2d at 1444. See also Piasecki, 745 F.2d at 1472,
223 USPQ at 788. Obviousness is then determined on the basis of the evidence as
a whole and the relative persuasiveness of the arguments. See Oetiker, 977 F.2d at
1445, 24 USPQ2d at 1444; Piasecki, 745 F.2d at 1472, 223 USPQ at 788.

ANALYSIS
A. Rejection of claims 1, 2, 4, and 5 under 35 U.S.C. § 103(a) as
unpatentable over Schuyler, Gainer, Adair, and Domenikos.
Appellant argues that “there is no rejection in which a single prior art reference
has been used to show a whole, undivided element of any claim.” (Br. 8) For
example, the Appellant argues that Gainer does not teach 1) database commands,
2) the generation of files, and 3) providing the files to applications, and neither
Adair or Demonikos disclose the second or third of those limitations (Br. 10). The
Examiner relies on Domenikos for “generating said file from said data and
providing said file to said application” (Answer 6).
While Gainer does teach database commands (Findings of Fact 2-3), none of
the references asserted in this rejection teach generating a file from data received
from a database and providing the file to the requesting application (Findings of
Fact 3, 5, 6, and 7) as required by both independent claims (claims 1 and 4). In
particular, the application information file generated in Domenikos is nowhere
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disclosed to be generated from data extracted from a database, and there is no
disclosure to link that file to a call from the application to the operating system
(Finding of Fact 6).
The Examiner thus has provided no reference showing the missing limitations,
nor has he made a prima facie case of obviousness of claims 1 and 4 over Schuyler,
Gainer, Adair, and Domenikos. We also reverse the Examiner’s rejection of
dependent claims 2 and 5, because these claim rejections rely upon the underlying
rejection of independent claims 1 and 4, respectively. See In re Fine, 837 F.2d
1071, 1073-74, 5 USQP2d 1596, 1598 (Fed. Cir. 1988) (If an independent claim is
nonobvious under 35 U.S.C. § 103, then any claim dependent therefrom is
nonobvious).
B. Rejection of claims 3 and 6 under 35 U.S.C. § 103(a) as unpatentable
over Schuyler, Gainer, Adair, and Domenikos in view of Irwin and
Doyle.
Appellant restates the arguments made against the above rejection and
argues that 1) the six cited references fail to teach all of the claim limitations of
claims 3 and 6; and 2) there is no motivation to combine Shuyler, Gainer, Adair,
and Demonikos, nor has the Examiner cited any teaching or suggestion to combine
Irwin or Doyle with the combination of four base references (Br. 15-16). Because
neither Irwin nor Doyle provide the missing limitation of “generating a file from
data received from a database and providing the file to the requesting application”
(Findings of Fact 8 and 9), the Examiner has provided no reference showing the
missing limitations, nor has he made a prima facie case of obviousness of claims 3
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and 6 over Schuyler, Gainer, Adair, and Domenikos in further view of Irwin and
Doyle.

CONCLUSION
We conclude that Appellant has shown that the Examiner erred in rejecting
claims 1-6 under 35 U.S.C. § 103(a).

DECISION
The decision of the Examiner to reject claims 1-6 under 35 U.S.C. § 103(a)
is reversed.
REVERSED

hh

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