Ex parte Smiley

Board of Patent Appeals and Interferences

Nov 30, 1998

07921826 (B.P.A.I. Nov. 30, 1998)

Application for patent filed July 29, 1992. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte PHILLIP L. SMILEY
____________
Appeal No. 96-1898
Application No. 07/921,8261
____________
ON BRIEF
____________
Before HAIRSTON, KRASS, and BARRETT, Administrative Patent
Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1 and 3 through 24, all of the claims remaining in the
application.
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Application No. 07/921,826
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The invention is directed to modelling data in an
information repository, best described by reference to
representative independent claim 1, reproduced as follows:
1. A method for modelling data in an information
repository, comprising the steps of:
identifying and defining a plurality of data objects
including data;
formulating relationships between said data objects;
defining physical storage information for each of said
data objects;
storing said data objects, relationships and physical
storage information as a network including a plurality of
nodes associated with said data objects and said relationships
as connectivities therebetween and;
maintaining a method entity for said information
repository including information to implement said
relationships in a database.
The examiner relies on the following references:
Ferrer et al. (Ferrer) 4,479,196 Oct. 23,
1984
M.R. Blaha et al., ”Relational Database Design Using an
Object-Oriented Methodology” Communications of the ACM, pp.
414-428, April 1988.
L.M. Burns et al., “A Graphical Entity-Relationship Database
Browser” IEEE Computer, pp. 694-704, 1988.
J.V. Joseph et al., “Object-Oriented Databases: Design and
Implementation” Proceedings of the IEEE, Vol.79, No.1, pp. 42-
64, 1991.
Appeal No. 96-1898
Application No. 07/921,826
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Claims 1 and 3 through 23 stand rejected under 35 U.S.C.
103. As evidence of obviousness, the examiner cites Ferrer
and Joseph with regard to claims 1, 3 through 10 and 12
through 22, adding Blaha with regard to claim 11. The
examiner cites Ferrer and Burns with regard to claim 23.
Claims 12 through 22 stand further rejected under 35 U.S.C.
112, first and second paragraphs.
Reference is made to the briefs and answers for the
respective positions of appellant and the examiner.
OPINION
At the outset, we make some observations about the
handling of the prosecution of this case by both appellant and
the examiner, as well as presumptions we have made in
determining the issues and reaching our decision herein.
The exact claims on appeal and the number thereof is
confusing since there appears to have been 23 claims, with
claim 2 being canceled; yet the new principal brief, filed
August 22, 1996 (Paper No. 18) has an appendix showing 24
claims with claim 2 being canceled. Further, statements in
the briefs and answers, directed toward the rejections and
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Application No. 07/921,826
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arguments for and against, only indicate that there are,
indeed, 23 claims with claim 2 being canceled. Although
appellant presented the claims in the appendix of the latest
principal brief as being correct, and the examiner apparently
acquiesced in that this was a correct copy of the claims on
appeal [note the last line of page 3 of the principal answer
of May 31, 1995, which was confirmed by the examiner in the
communication of November 13, 1996 (Paper No. 20) wherein the
examiner chose to rely on the original answers and that “[n]o
further comment” was deemed necessary by the examiner], the
claims presented for appeal in the appendix to the latest
principal brief is not correct.
Apparently, an error in this new set of claims presented
by appellant was made in including a claim “5" which was
redundant of what was already recited in claim 4 (with the
addition of depending from claim 2, a canceled claim) and
then, every claim thereafter was labeled with a number which
was one integer greater than its intended number.
Accordingly, in analyzing the claims, and making our decision,
we presume that claim 5 in the appendix to the latest
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principal brief should be deleted and that claims 6 through 24
should be relabeled as claims 5 through 23, respectively.
With regard to the statements of rejection, the
examiner’s presentation of the grounds of rejection is
confusing. With regard to the rejections based on prior art,
under 35 U.S.C. 103, the principal answer indicates that
Ferrer and Blaha are employed against claim 11, that Ferrer
and Burns is applied against claim 23, that Ferrer and Joseph
is applied against claims 12 through 22 and, in a new ground
of rejection, entered in the principal answer, Ferrer and
Joseph is also applied against claims 1 through 10 (this
should be claims 1 and 3 through 10 since claim 2 has been
canceled). This would have been well and good but then, in
the supplemental answer, the examiner states other grounds of
rejection based on prior art with Ferrer and Joseph applied
against claims 1 and 3 through 10 and Ferrer, Joseph and Blaha
applied against claim 11. Further, it is not clear from the
supplemental answer whether these are new grounds of rejection
or mere restatements of grounds previously recited. They would
appear to be restatements but whereas only Ferrer and Blaha
were employed against claim 11 previously, the examiner now
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adds Joseph to this combination in rejecting claim 11. This
would appear reasonable and proper since claim 11 depends from
claim 1 the rejection of which relies, at least in part, on
Joseph.
Thus, we will presume, in reaching our decision, that the
rejections before us are:
1. Rejection of claims 12 through 22 under the first and
second paragraphs of 35 U.S.C. 112.
2. Rejection of claims 1, 3 through 10 and 12 through 22
under 35 U.S.C. 103 over Ferrer and Joseph.
3. Rejection of claim 11 under 35 U.S.C. 103 over Ferrer,
Joseph and Blaha.
4. Rejection of claim 23 under 35 U.S.C. 103 over Ferrer
and Burns.
With these presumptions in mind, we proceed with our
decision.
We turn first to the rejection of claims 12 through 22
under 35 U.S.C. 112, first and second paragraphs.
With regard to the first paragraph of 35 U.S.C. 112, this
rejection is based on the enablement clause, the examiner
contending that the claim limitation of “rule information”
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renders the claim not only unclear because it suggests that
information is capable of “action,” but that there is no
teaching in the specification as to how to accomplish an
action by the rule information. The second paragraph
rejection is based on similar reasoning, the examiner
contending that it is unclear what is meant by “to act on
classes of objects” because nothing which may be construed as
an action is specified. [principal answer - page 5].
We will sustain the rejection under both the first and
second paragraphs of 35 U.S.C. 112.
In our view, the examiner has raised a reasonable
challenge to the sufficiency of disclosure. The recitation of
“rule information to act on classes of said objects” appears
to indicate that there is some active participation on the
part of the “rule information” which causes classes of objects
to do something yet we find no disclosure instructing artisans
on what must be done or how to do it. In response to the
rejection, appellant points us to page 14, lines 30 et seq. of
the specification. That part of the specification reads as
follows:
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ENTITIES 21, such as customer 60, account management
61, returned material 62, sales order history 63,
ship 64, product database 65, world wide price list
66, and inventory 67, are joined by relationship
connections 68-73 which represent operational or
business rules, to form an operational system
network.
From this disclosure, appellant contends that “rule
information...implemented as relationships ‘acts’ on classes
of objects to join the objects together to form an operational
system network” [principal brief - page 5] and concludes that
the skilled artisan “would be able to use relationships to
join object classes together without undue experimentation.”
We agree with the examiner that appellant’s response does
not relate to the claim language. We fail to see how the
recited portion of the specification relates to “rule
information to act on classes of said objects,” as claimed.
Appellant speaks of “relationships.” However, “relationships”
are already recited on line 3 of claim 12 as “relationships
interconnecting said plurality of objects...” Therefore, it
would appear that the later recited “rule information” would
be something separate and distinct from “relationships.”
Therefore, appellant’s argument that the artisan would be able
to use “relationships” to join object classes would appear to
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be non-responsive and/or immaterial to whether the artisan
would have known how to make and use the claimed “rule
information to act on classes of said objects.”
In the reply brief, appellant further explains that the
“operational or business rules” recited in the specification
is the claimed “rule information.” If so, this still does not
explain how such rules “act on classes of...objects,” as
claimed, nor does it explain how the skilled artisan is to
implement these rules in such a manner as to practice the
claimed invention.
The examiner has established a reasonable basis for
challenging the sufficiency of the instant disclosure with
regard to the subject matter of claims 12 through 22 and, in
our view, appellant has not sufficiently answered that
challenge. Accordingly, we will sustain the rejection of
claims 12 through 22 under 35 U.S.C. 112, first paragraph.
We will also sustain the rejection of claims 12 through
22 under 35 U.S.C. 112, second paragraph, for similar reasons.
That is, we simply do not understand what is meant by “rule
information to act on classes of said objects.” If “rule
information” is represented by relationship connections, as
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contended by appellant at page 2 of the reply brief, then it
is not understood how this differs from “relationships
connecting...,” recited previously in the claim. Further, it
is unclear what type of action is intended by the rule
information “to act” on classes of objects.
We turn now to the prior art rejections.
First, with regard to the rejection of claims 12 through
22 under 35 U.S.C. 103, we will summarily reverse this
rejection since a claim which is indefinite and not completely
understood cannot, logically, have prior art applied against
it. By making this technical reversal of the prior art based
rejection of claims 12 through 22, it should not be implied
that the art relied on by the examiner would not be relevant
relative to claims of the present scope containing definite
limitations. In re Steele, 305 F.2d 859, 862-863, 134 USPQ
292, 295 (CCPA 1962).
With regard to claims 1 and 3 through 10, the examiner
contends that Ferrer discloses the identification and defining
a plurality of data objects, formulating relationships between
the data objects and storing the data objects, relationships
and physical storage information as a network. The examiner
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contends that Ferrer might not explicitly teach the steps of
defining and storing physical storage information for each of
the data objects but that it was well known in the computer
arts that such definition and storage of physical storage
information was always required in order to subsequently
retrieve the stored information.
The examiner also admits that Ferrer did not teach the
claimed step of “maintaining a method entity...” but the
examiner relies on Joseph’s teaching of an entity-relationship
in Figure 4 therein for providing for this deficiency in
Ferrer, contending that the combination would have been
obvious because of the benefit to Ferrer gained from providing
this benefit of the “well-known feature of polymorphism”
[principal answer - pages 8-9].
For his part, appellant contends that Ferrer does not
teach the claimed step of storing data objects, relationships
and physical storage information “as a network” [reply brief -
page 5, emphasis in the original]. We disagree. The
information at the nodes, along with the relationships between
the nodes, represented by arrows, in Ferrer clearly comprise a
“network,” as broadly claimed. When this information is
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stored for later retrieval and then retrieved, the nodes and
relationships must still be the same as before storage,
containing the same information that made it a “network” in
the first place and, as such, Ferrer does, indeed, broadly
disclose the storage of data objects, relationships and
physical storage information as a network.
Appellant further contends [reply brief - bottom of page
5] that Ferrer and Joseph are not properly combinable since
Ferrer relates to “hypergraphs and hyperedges which are
distinctly different from object oriented databases and
object-oriented programming languages as disclosed by Joseph.
We disagree with this argument also because, as broadly set
forth, the claimed subject matter calls for a method “for
modelling data in an information repository” and does not
appear to be limited to any specific type of system. As such,
both Ferrer and Joseph would be in the general area of data
base management and we find no reason the artisan would not
have been expected to know of each type of system.
Finally, appellant challenges the examiner’s assertion
that the claimed maintaining step is known as “polymorphism”
[reply brief - page 5] and requests the examiner to provide
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evidence of the truth of the assertion. The examiner has not
complied with the request.
The term “polymorphism” is defined by appellant in the
specification [top of page 20] as
the practice of defining the same named method in
different classes and having that method execute
possibly distinct tasks from one class to the next.
It is not clear to us whether the claim limitation of
“maintaining a method entity...” is meant to be a statement
relating to such a “polymorphism.”
In any event, claim 1 clearly calls for “maintaining a
method entity...” and the examiner has not identified, to our
satisfaction, anything in the prior art which would have
suggested this limitation. The examiner simply points to the
“Entity-relationship” in Figure 4 of Joseph and asserts,
apparently, that this is the suggestion for modifying Ferrer
to include a step of “maintaining a method entity...” While
appellant’s arguments are not impressive, since they basically
contend that the claimed steps are not taught by the applied
references without any further detail as to why this is the
case, we still will not sustain the rejection of claims 1 and
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3 through 10 under 35 U.S.C. 103 over Ferrer and Joseph
because, in our view, the examiner has not established a prima
facie case of obviousness with regard to the claimed subject
matter. The responsibility lies with the examiner, in the
first instance, to establish obviousness and we are not
convinced, from the examiner’s reasoning, that Joseph does,
indeed, suggest the claimed step of “maintaining a method
entity...” For us to assume that it does would amount to
speculation and speculation has no place in a conclusion of
obviousness within the meaning of 35 U.S.C. 103.
Accordingly, we will not sustain the rejection of claims
1 and 3 through 10 under 35 U.S.C. 103.
We also will not sustain the rejection of claim 11 under
35 U.S.C. 103 because claim 11 depends from independent claim
1 and while the examiner relies on an additional reference to
Blaha for the limitations added by claim 11, Blaha does not
provide for the deficiencies of Ferrer and Joseph with regard
to the claimed step of “maintaining a method entity...”
Turning now to the rejection of claim 23 under 35 U.S.C.
103, this rejection relies on Ferrer and Burns.
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The issue here is whether Burns teaches a navigator
connected to the database for enabling browsing among objects
and relationships independent of the database. The examiner
contends that such browsing is taught by Burns, although the
examiner never explains where, in Burns, there is a teaching
of the “independent” limitation. Appellant argues that Burns
merely suggests a database dependent browser but never
elucidates as to why Burns is considered to be a database
dependent browser as opposed to a browser independent of the
database.
We make no representation, one way or another, as to the
teaching of Burns since we will not sustain the rejection of
claim 23 under 35 U.S.C. 103 for technical reasons. That is,
for reasons, infra, we make a new ground of rejection of claim
23 under 35 U.S.C. 112, second paragraph (as well as under the
first paragraph) and, as such, we will not speculate as to the
meaning of claim limitations in order to apply prior art. In
re Steele, supra.
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NEW GROUNDS OF REJECTION IN ACCORDANCE WITH 37 CFR 1.196(b)
Claim 23 is rejected under 35 U.S.C. 112, first and
second paragraphs, as being based on an inadequate written
description and being indefinite, respectively.
First, with regard to the written description, we find no
support in the disclosure, as originally filed, for the now
claimed limitation of the navigator enabling browsing among
objects and relationships “independent” of the database. This
limitation was added by the amendment of October 27, 1994
(Paper No.3) but we find no indication that there is any
support in the original specification, including the original
claims, or in the drawings for such a limitation.
With regard to the rejection of claim 23 under the second
paragraph, it is unclear exactly what is intended by browsing
“independent” of the database. We find no explanation in the
specification as to what is meant by “independent.” It is
unclear, for example, how the browsing of the instant claimed
invention being “independent” of the database, differs from
the browsing function taught by the Burns reference, of
record.
CONCLUSION
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We have sustained the rejection of claims 12 through 22
under 35 U.S.C. 112, first and second paragraphs but we have
reversed the rejection of claims 1 and 3 through 23 under 35
U.S.C. 103. In addition, we have entered new grounds of
rejection, in accordance with 37 CFR 1.196(b), rejecting claim
23 under 35 U.S.C. 112, first and second paragraphs.
Accordingly, the examiner’s decision is affirmed-in-part.
In addition to affirming the examiner’s rejection of one
or more claims, this decision contains a new ground of
rejection pursuant to 37 CFR 1.196(b)(amended effective Dec.
1, 1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197
(Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office 63,
122 (Oct. 21, 1997)). 37 CFR 1.196(b) provides, “A new ground
of rejection shall not be considered final for purposes of
judicial review.”
Regarding any affirmed rejection, 37 CFR 1.197(b)
provides:
(b) Appellant may file a single request for
rehearing within two months from the date of the
original decision . . . .
37 CFR 1.196(b) also provides that the appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of
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rejection to avoid termination of proceedings (37 CFR
1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Should the appellant elect to prosecute further before
the Primary Examiner pursuant to 37 CFR 1.196(b)(1), in order
to preserve the right to seek review under 35 U.S.C. 141 or
145 with respect to the affirmed rejection, the effective date
of the affirmance is deferred until conclusion of the
prosecution before the examiner unless, as a mere incident to
the limited prosecution, the affirmed rejection is overcome.
If the appellant elects prosecution before the examiner
and this does not result in allowance of the application,
abandonment or a second appeal, this case should be returned
to the Board of Patent Appeals and Interferences for final
action on the affirmed rejection, including any timely request
for rehearing thereof.
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
1.136(a).
AFFIRMED-IN-PART
37 CFR 1.196(b)
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LEE E. BARRETT )
Administrative Patent Judge )
Appeal No. 96-1898
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EAK/jlb
Appeal No. 96-1898
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L. Joy Griebenow, Esq.
Texas Instruments Incorporated
P.O. Box 655474, M/S 219
Dallas, TX 75265