Ex Parte Smith et al

Patent Trial and Appeal Board

Oct 25, 2017

13612145 (P.T.A.B. Oct. 25, 2017)

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.
13/612,145 09/12/2012 John J. Smith 20850 4281
26890 7590 10/27/2017
TA1UFS M STOVFR
EXAMINER
TERADATA US, INC. HARMON, COURTNEY N
10000 INNOVATION DRIVE
DAYTON, OH 45342 ART UNIT PAPER NUMBER
2159
NOTIFICATION DATE DELIVERY MODE
10/27/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
michelle.boldman @ teradata. com
j ames. stover @ teradata.com
td.uspto@outlook.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN J. SMITH and MICHAEL G. COUTTS
Appeal 2017-006812
Application 13/612,145
Technology Center 2100
Before ALLEN R. MacDONALD, BETH Z. SHAW, and
MICHAEL J. ENGLE, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-006812
Application 13/612,145
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 4, and 6—14. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claim
Exemplary claim 1 under appeal reads as follows (brackets, and
formatting added):
1. A computer-implemented method for at least
facilitating generation of a communication mechanism,
including one or more services, for communicating with a
relational database over a network by one or more object-based
applications of one or more object-based programming
languages, the computer-implemented method comprising:
[(A)] obtaining one or more database queries of the
relational database in a database query language;
[(B)] generating, at least partly based on the one or more
database queries, relational-query-to-object data that at least
maps one or more database components associated with the one
or more database queries to one or more object-based
components of the one or more object-based programming
languages, wherein the relational-query-to-object data further
includes:
a mapping of the one or more database fields
associated with the one or more queries to one or more
data types of at least one of the one or more object-based
programming languages for providing the one or more
services that communicate with the relational database
over the network, thereby allowing a query-based
communication mechanism that includes the one or more
services over the network to be generated, at least partly
based on the one or more database queries, that allows
the one or more object-based applications of the one or
more object-based programming languages to
communicate and use the one or more services provided
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Application 13/612,145
over the network via the query-based communication
mechanism with the relational database over the network;
[(C)] generating at least a part of the communication
mechanism based on the relational-query-to-object data, by at
least using the mapping of the one or more database fields
associated with the one or more queries to one or more data
types of at least one of the one or more object-based
programming languages for providing the one or more services
that communicate with the relational database over the network;
and
[(D)] using the generated communication mechanism to
generate one or more services that can be used by the one or
more object-based applications of the one or more object-based
programming languages to communicate with the relational
database over the network.
Rejections
1. The Examiner rejected claims 1,4, 6—8, 11, and 12 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Paval (US
2006/0089945 Al; publ. Apr. 27, 2006) and Yeh et al. (US 7,051,038 Bl;
iss. May 23, 2006).1
2. The Examiner rejected claims 9 and 10 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Paval, Yeh, and Vanderbilt et
al. (US 5,793,965; iss. Aug. 11, 1998).2
1 Separate patentability is not argued for claims 4, 6—8, and 11. Except for
our ultimate decision, this rejection of these claims is not discussed further
herein.
2 Separate patentability is not argued for claims 9 and 10. Thus, the
rejections of these claims turns on our decision as to claim 1. Except for our
ultimate decision, these claims are not discussed further herein.
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Appeal 2017-006812
Application 13/612,145
3. The Examiner rejected claims 13 and 14 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Paval, Yeh, and Prompt et al.
(US 2001/0034733 Al).3
Issue on Appeal
Has the Examiner erred in rejecting claim 1 as being obvious?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions.
1
Appellants contend that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because:
To establish a prima facie case of obviousness, at least the
following requirements must be met.
(1) the references when combined must teach or suggest
all elements of the claimed subject matter;
(2) there must be some motivation, suggestion or
teaching to combine the references; and
(3) there must be, within the references, a reasonable
expectation of success.
See M.P.E.P. § 2143 (8th ed., Rev. 2 [May 2004]), at 2100-129.
The Office has not established a prima facie case of obviousness
because these requirements have not been satisfied.
3 Separate patentability is not argued for claims 13 and 14. Thus, the
rejections of these claims turns on our decision as to claim 1. Except for our
ultimate decision, these claims are not discussed further herein.
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Appeal 2017-006812
Application 13/612,145
App. Br. 5 (formatting and emphasis added).
As to Appellants’ above contention, we disagree. Appellants’ citation
to the Eighth Edition, Revision 2, of the Manual of Patent Examining
Procedure (MPEP) is not convincing. This 2004 version of the MPEP
does not take into account the Supreme Court’s decision in KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398 (2007) or the eight revisions to the MPEP
subsequent to the version cited by Appellants (yet before the filing date of
Appellants’ Brief). At the filing date of Appellants’ Brief, the current
version of the MPEP was the Ninth Edition, Revision 7 (dated Nov. 2015).
We do not find the above particular argued requirements to be consistent
with either KSR or the current version of the MPEP.
2
Appellants also contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
[I]t is respectfully submitted that Yeh does not teach providing
or generating one or more services that can be used by one or
more object-based applications of one or more object-based
programming languages to communicate with a relational
database over the network (claim 1). In other words, Yeh does
not teach or suggest generating services that can be used by an
object-based application to communicate with a relational
database, let alone teaching or suggesting generating services
based on relational-query-to-object that includes [10 line
quotation from claim 1 omitted].
It is noted that Paragraphs [0012] and [0017] of Pavel
teach execution of a converted query on resources that may
include services operable to communicate data. However, it is
respectfully submitted that this in itself does not teach or even
remotely suggest a communication mechanism that includes the
one or more services generated based on one or more database
queries (claim 1). Moreover, Pavel, and Yeh, taken alone or in
combination, do not teach or suggest: [3 line quotation from
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Appeal 2017-006812
Application 13/612,145
claim 1 omitted]. It is also apparent that Pavel, and Yeh, taken
alone or in combination, do not teach or suggest: [2 line quotation
from claim 1 omitted].
App. Br. 6—7.
As to Appellants’ above assertions, we disagree. Appellants merely
recite the particular language of claim 1 and assert the cited prior art
reference does not teach or suggest the claim limitations. Without more,
this fails to constitute an argument on the merits. See 37 C.F.R.
§ 41.37(c)(l)(iv); In reLovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).
3
Appellants also contend that the Examiner erred in rejecting claim 12
under 35 U.S.C. § 103(a) because:
[C]laim 12 recites: [6 line quotation from claim 1 omitted]. It is
apparent that the additional features recited in claim 12 are not
taught or suggested by Paval and Yeh, taken alone, or in
combination even assuming purely arguendo that they can be
combined.
App. Br. 7.
As to Appellants’ above assertion, we disagree. Again, Appellants
merely recite the particular language of claim 12 and assert the cited prior art
references do not teach or suggest the claim limitations. Without more,
this fails to constitute an argument on the merits. See 37 C.F.R.
§ 41.37(c)(l)(iv); Lovin, 652 F.3d at 1357.
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1,4, and 6—14 as
being unpatentable under 35 U.S.C. § 103(a).
(2) Claims 1, 4, and 6—14 are not patentable.
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DECISION
The Examiner’s rejections of claims 1, 4, and 6—14 as being
unpatentable under 35 U.S.C. § 103(a) are affirmed.4
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
4 Should there be further prosecution, the Examiner may wish to consider
whether the claims are indefinite under 35 U.S.C. § 112, second paragraph
due to the failure of the Specification to disclose sufficient structure for
means-plus-fimction limitations under § 112, sixth paragraph. See MPEP
§ 2181 (II)(B); Aristocrat Techs. Australia PtyLtd. v. Int’l Game Tech., 521
F.3d 1328, 1333, 1337—38 (Fed. Cir. 2008). For example, Appellants’
method claim 1 recites a “communication mechanism to generate one or
more services,” which may be a means-plus-function limitation without
sufficient disclosure in the Specification of a corresponding algorithm for
performing the generating. See, e.g., Twin Peaks Software Inc. v. IBM
Corp., 690 F. App’x 656, 661—65 (Fed. Cir. 2017) (unpublished) (finding a
method claim invalid for failure to disclose sufficient structure for the
means-plus-lunction limitation “mechanism for managing”).
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