Ex Parte Suen et al

Patent Trial and Appeal Board

Jan 28, 2013

10186328 (P.T.A.B. Jan. 28, 2013)

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.
10/186,328 06/27/2002 Edward Shaw-Lee Suen OIC0127US 4792
60975 7590 01/28/2013
CAMPBELL STEPHENSON LLP
11401 CENTURY OAKS TERRACE
BLDG. H, SUITE 250
AUSTIN, TX 78758
EXAMINER
BIAGINI, CHRISTOPHER D
ART UNIT PAPER NUMBER
2445
MAIL DATE DELIVERY MODE
01/28/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte EDWARD SHAW-LEE SUEN and
SUNIL PRABHAKAR DIXIT
_____________

Appeal 2010-009124
Application 10/186,328
Technology Center 2400
______________

Before ALLEN R. MacDONALD, ROBERT E. NAPPI, and SCOTT R.
BOALICK, Administrative Patent Judges.

NAPPI, Administrative Patent Judge

DECISION ON APPEAL
Appeal 2010-009124
Application 10/186,328

2

This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1, 3 through 7, and 10 through 12.
At the outset we note that the Briefs in this application are unusual in
that the Appeal Brief and Reply Brief each include a claim appendix with
different claims.
1
The Appeal Brief’s claim appendix contains the claims on
appeal, claims 1, 3, through 7 and 10 through 12, which represent the claims
as amended by the January 6, 2010 amendment after final. The Reply
Brief’s claims appendix includes a version of claims 1, 3, through 7, 10
through 12 from a different point in prosecution and also includes claims 19-
23 which were expressly canceled by the January 6, 2010 amendment. The
Examiner has twice indicated that the January 6, 2010 amendment is
entered. See Answer page 2, and in the June 10, 2010 communication.
2

Appellants have made no comment on the record about why there are two
different claim appendices and we are dismayed by this lack of a candor.
Nonetheless, it is clear that the claims in the Appeal Brief’s claims appendix
are a copy of the claims on appeal. We construe Appellants submission of a
different set of claims in the Reply Brief’s claims appendix as an improper
amendment after Appeal and as such these claims are not before us.

We affirm.

1
Throughout this opinion we refer to Appellants’ Appeal Brief January 6,
2010, and Reply Brief dated June 1, 2010.
2
Throughout this opinion we refer to the Examiner’s Answer dated March
31, 2010.
Appeal 2010-009124
Application 10/186,328

3

INVENTION
The invention is directed to a technique to dynamically select sources
for user to direct quires for the users to the proper data sources. See
paragraphs 0107-011 of Appellants’ Specification. Claim 1 is representative
of the invention and reproduced below:
1. A computer program product comprising:
a first set of instructions, executable on a computer
system, configured to receive user information for each user of
a plurality of users at a start of a current session of each user;
a second set of instructions, executable on the computer
system, configured to dynamically determine a plurality of data
sources designated for each user
based on the user information, wherein
the plurality of data sources are data warehouse systems,
and
the plurality of data sources comprises
a common database that is accessible by all of the plurality of
users, and at least one user-specific database that is configured
to be accessed by only designated users;
a third set of instructions, executable on the computer
system, configured to set a data source variable for each user,
wherein
the data source variable comprises information
configured to identify the data sources designated for the user,
and the data source variable is a session-specific variable that is
utilized by the user only for the current session;
a fourth set of instructions, executable on the computer
system, configured to direct queries for each user to the data
sources designated for the user based on the identity of the data
sources set in the data source variable; and
computer readable storage media, wherein said computer
program product is encoded in said computer readable storage media.
Appeal 2010-009124
Application 10/186,328

4

REJECTION AT ISSUE
The Examiner has rejected claims 1, 3 through 7 and 10 through 12
under 35 U.S.C. § 103(a) as unpatentable over Rubert (U.S. 6,366,915 B1)
and Gilfillan (U.S. 2002/0165856 A1).
3
Answer 4-10.

ISSUE
Appellants argue on pages 4 through 7 of the Appeal Brief that the
Examiner’s rejection of independent claim 1 under 35 U.S.C. § 103(a) is in
error. These arguments present us with the issues: did the Examiner err in
finding that the combination of Rubert and Gilfillan teaches a system which
allows for user selection of data sources?

ANALYSIS
We have reviewed Appellants’ arguments in the Briefs, the
Examiner’s rejection and the Examiner’s response to the Appellants’
arguments. We disagree with Appellants’ conclusion that the Examiner
erred in rejecting independent claim 1 under 35 U.S.C. § 103(a). Appellants
argue “Claim 1 requires a fourth set of instructions configured to provide a
user-specific data source section means to each user so as to select one or
more user-specific data sources after the start of the current session.” Brief
4. Further, Appellants argue that claim 1 recites sixth instruction configured
to directing queries for each user to the data sources. Brief 5-6. Appellants’

3
We note that the Examiner’s stated rejections includes claims (e.g.
rejection of claims 13 and 15 under 35 U.S.C. § 101 and 35 U.S.C. § 103(a))
which have been canceled by the January 6, 2010, amendment. However, as
the claims have been canceled, the rejections are not before us.
Appeal 2010-009124
Application 10/186,328

5

arguments on pages 2 through 5 of the Reply Brief, similarly center on
Rubert not teaching a user selection of a user-specific data source and other
limitations in the fifth and sixth set of instructions. These arguments are not
commensurate in scope with claim 1 as presented on appeal.
Representative claim 1 as amended by the January 6, 2010
amendment does recite a claimed fourth set of instructions, but does not
recite a “user-specific data source section means” as argued, nor does claim
1 recite either a fifth or sixth set of instructions as argued.
We note that the Examiner in the statement of the rejection and
response to the arguments similarly addresses limitations which are not in
the claims and we have not considered these findings as they are not relevant
to this appeal. Accordingly, we sustain the Examiner’s rejection of
independent claim 1 and claims 3 through 7 and 10 through 12.

ORDER
The decision of the Examiner to reject claims 1, 3 through 7 and 10
through 12 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

ELD