Ex Parte Sinclair

Patent Trial and Appeal Board

Aug 29, 2013

11563287 (P.T.A.B. Aug. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PAUL SINCLAIR
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Appeal 2011-003212
Application 11/563,287
Technology Center 2100
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Before: KALYAN K. DESHPANDE, DAVID M. KOHUT, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-003212
Application 11/563,287
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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-22. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The claims are directed to a partition elimination system for a
database that uses a multi-level partitioning definition. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1 A partition elimination system for a database that uses a
multi-level partitioning definition, the system including:
an interface for receiving data indicative of a plurality of
level-specific elimination lists respectively associated with each
level in the definition; and
a processor responsive to the data for providing a single
combined partition elimination list.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Choy
Sinclair
US 5,551,027
US 6,845,375 B1
Aug. 27, 1996
Jan. 18, 2005
Hacigümüs et al. “Executing SQL over Encrypted Data in the Database-
Service-Provider Model” ACM SIGMOD 2002 June 4-6, 2002

Appeal 2011-003212
Application 11/563,287
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REJECTIONS1
The Examiner made the following rejections:
Claims 1-212 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to non-statutory subject matter. Ans. 4.
Claims 1-5 and 22 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Choy. Ans. 5.
Claims 6-9 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Choy and Sinclair. Ans. 7.
Claims 10-21 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Choy and Hacigümüs. Ans. 8.

ISSUES ON APPEAL
Based on Appellant’s arguments in the Appeal Brief (App. Br. 4-9)
the issues presented on appeal are:
1. Whether claim 1 lacks the necessary physical articles or objects to
constitute a machine or a manufacture within the meaning of 35
USC §101.
2. Whether Choy discloses the subject matter of claim 1.

1 Independent claims 1 and 22 are collectively argued in connection with the
rejection under 35 U.S.C. 102(b) (App. Br. 5-7); dependent claims 2-21 are
not separately argued (App. Br. 7-9)(merely restating with respect to a
second claim an argument, previously presented with respect to a first claim,
is not an argument for separate patentability of the two claims.) In view of
the foregoing, we select claim 1 as representative of all the claims rejected
under 35 U.S.C. §§102(b), 103(a), and our analysis only addresses that
claim.
2 The rejection of claim 22 under 35 U.S.C. 101has been withdrawn. Ans. 3.
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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We disagree with Appellant’s
conclusions as to all rejections. We adopt as our own (1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken and (2) the reasons set forth by the Examiner in the Examiner’s
Answer in response to Appellant’s Appeal Brief. We concur with the
conclusions reached by the Examiner. We highlight the following
arguments for emphasis.
35 U.S.C. § 101
The Examiner finds that claims 1-21 are not directed to statutory
subject matter. Appellant contends that the interface and processor of claim
1 are hardware elements providing the necessary physical articles or objects
to constitute a machine under 35 U.S.C. § 101. App. Br. 4. Appellant argues
that, while paragraph [0041] of the Specification indicates that these
elements may not be discrete components but may be embedded
functionalities within the engine of database 2, there is no description that
the processor, interface, or database engine are software. App. Br. 5. The
Examiner responds that a database engine is known to be software. Ans. 13
citing to The Authoritative Dictionary of IEEE Standards Terms, 7th Edition.
The Examiner finds that:
It is unclear how the “interface” and “processor” could be
hardware, as applicant argues, if both elements are "embedded
functionalities" within a piece of software. No other embodiments in
which these elements are described as "hardware" can be found in the
specification.
Id.
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We agree with the Examiner. At the time of the invention, a database
engine was understood by those skilled in the art to be software: “Database
engine: [t]he program module or modules that provide access to a database
management system (DBMS.)”3 Therefore, as components of the database
system, the interface and processor are also software. In contrast,
Appellant’s Specification provides no description of either the processor or
interface as being hardware elements. Therefore, in the absence of sufficient
evidence or argument that claim 1 includes the necessary physical articles or
objects to constitute a machine or a manufacture, we sustain the rejection of
claims 1-21 under 35 U.S.C. § 101.
35 U.S.C. § 102(b)
Appellant contends that:
It is not seen that the cited excerpt of Choy et al. teaches or suggests
the interface, processor, elimination lists, or combined partition
elimination list recited in independent claims 1 and 22. It is not seen
that the specification or drawings of Choy et al include any teaching
or suggestion of the elimination lists or combined partition
elimination list described in the specification and recited in claims 1
and 22 of the present application.

App. Br. 7.
The Examiner finds that Choy’s “query interface analyzes the Coarse
Global Indexes to determine which partitions to query” (Ans. 13 citing Choy
col. 11, ll. 24-50) and that the Global Indexes are associated with each level
of the multi-level partitions definition (id. citing Choy col 8, ll. 41-54 and
Fig. 1.) The Examiner further finds that Choy’s teaching of combining the
results of analyzing the partitions identified in multiple Coarse Global

3 Microsoft Computer Dictionary. Redmond, Wash: Microsoft Press, 2002.
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Partitions Lists to create a combined list of partition identifiers to be queried
discloses the claimed processor responsive to data indicative or a plurality of
level-specific elimination lists to provide a single combined partition
elimination list. Ans. 13-14 citing Choy col. 11, ll. 30-32.
We agree with the Examiner. In particular, Choy’s teaching of
analyzing the Coarse Global Indexes reasonably discloses the disputed
interface of claim 1 and combining of partition identifiers, the disputed
processor providing a single combined partition elimination list. We note
that a broad interpretation of partition elimination list is consistent with
Appellant’s Specification, describing that “[t]he result of a partition
elimination process is typically provided in the form of an elimination list
including one or more partition pairs. This list can be either an inclusion list
or an exclusion list.” Spec. [0008]. In contrast, without specifically
addressing the Examiner's findings, Appellant’s response amounts to a
general allegation that the claims define a patentable invention without
explaining why the Examiner’s findings are erroneous.4 Accordingly, in the
absence of sufficient evidence or argument, we find that the Examiner did
not err in rejection claim 1 as being anticipated by Choy. Therefore, we
sustain the rejection of independent claim 1 under 35 U.S.C. § 102(b) as
being anticipated by Choy and, for the same reasons, the rejections of
independent claim 22 and dependent claims 2-5 not separately argued.

4 See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the
Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.")

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35 U.S.C. § 103(a)
Appellant contends that claims 6-21 are allowable by virtue of their
dependency from and for the reasons set forth in connection with claim 1.
App. Br. 8-9. Since we find these arguments unpersuasive of Examiner
error for the reasons supra we likewise sustain the rejections of claims 6-21
under 35 U.S.C. § 103(a).
CONCLUSION
The Examiner did not err in finding that (1) claim 1 lacks the
necessary physical articles or objects to constitute a machine or a
manufacture within the meaning of 35 U.S.C. § 101 or that (2) Choy
discloses the subject matter of claim 1. Therefore, we sustain the rejections
of (i) claims 1-21 under 35 U.S.C. § 101 as directed to non-statutory subject
matter; (ii) claims 1-5 and 22 under 35 U.S.C. § 102(b) as being anticipated
by Choy; (iii) claims 6-9 under 35 U.S.C. §103(a) over Choy and Sinclair;
and (iv) claims 10-21 under 35 U.S.C. §103(a) over Choy and Hacigümüs.

DECISION
The Examiner’s decision to reject claims 1-22 is affirmed.
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).

AFFIRMED

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