Ex parte Troisi

Board of Patent Appeals and Interferences

Sep 21, 2001

08730468 (B.P.A.I. Sep. 21, 2001)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JAMES H. TROISI
_____________
Appeal No. 1999-0855
Application No. 08/730,468
______________
ON BRIEF
_______________
Before RUGGIERO, LALL, and DIXON, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection
of claims 17-23, which are the only remaining claims in the
present application. Claims 1-16 have been canceled.
The claimed invention relates to the sorting and storing
of data using a sort tree in a computer system. More
particularly, the sort tree is dynamically reconfigured as it
Appeal No. 1999-0855
Application No. 08/730,468
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is created while data record identifiers are read into the
system. Appellant asserts at page 6 of the specification
that, by combining the initialization and building of the sort
tree in accordance with the number of data records, a sort
tree is created that is only large enough to hold the data
records entered, thereby reducing the amount of occupied
memory space.
Claim 17 is illustrative of the invention and reads as
follows:
17. A method of sorting and storing data in a
computer system, the computer system including a Central
Processor Unit (CPU), nonvolatile memory accessible by
the CPU, and working memory associated with the CPU, the
nonvolatile memory including a plurality of data records
stored therein, comprising the steps of:
reading said data records from said nonvolatile
memory and storing them in said volatile working memory;
assigning a unique data record identifier to
each data record in said volatile memory;
creating a sort tree in said volatile memory,
said sort tree including a plurality of nodes allocated
to locations in said volatile memory, said nodes
including a plurality of exterior nodes, a plurality of
interior nodes, and a root node;
initializing said sort tree in combination with
entry of said data record identifiers into said sort tree
so as to add nodes to the sort tree in accordance with a
number of data records added, so that the sort tree is
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Application No. 08/730,468
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initialized to the extent that it is only large enough to
hold the data records entered;
sorting said data record identifiers by
comparing said data record identifiers throughout said
sort tree to said root node; and
Appeal No. 1999-0855
Application No. 08/730,468
In addition, the Examiner relies on the admitted prior art at pages 1-1
5 of Appellant’s specification.
The Appeal Brief was filed May 4, 1998 (Paper No. 10). In response to2
the Examiner’s Answer dated May 19, 1998 (Paper No. 11), a Reply Brief was
filed July 23, 1998 (Paper No. 12), which was acknowledged and entered by the
Examiner without further comment as indicated in the communication dated July
30, 1998 (Paper No. 13).
4
reading said data records from said volatile
memory and storing them in said nonvolatile memory in the
order of said sorted record identifiers.
The Examiner relies on the following prior art reference:1
Amsbury, “A Balanced Static BST,” Data Structures From Arrays
to Priority Queues, pp. 456-59 (Wadsworth, Inc., 1985).
Claims 17-23 stand finally rejected under 35 U.S.C. § 103
as being unpatentable over the admitted prior art (hereinafter
APA) in view of Amsbury.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Briefs and Answer for the2
respective details.
OPINION
We have carefully considered the subject matter on
appeal,
the rejection advanced by the Examiner, the arguments in
support of the rejection, and the evidence of obviousness
Appeal No. 1999-0855
Application No. 08/730,468
5
relied upon by the Examiner as support for the rejection. We
have, likewise, reviewed and taken into consideration, in
reaching our decision, Appellant’s arguments set forth in the
Briefs along with the Examiner’s rationale in support of the
rejection and arguments in rebuttal set forth in the
Examiner’s Answer.
It is our view, after consideration of the record before
us, that the evidence relied upon and the level of skill in
the particular art would not have suggested to one of ordinary
skill in the art the invention set forth in claims 17-23.
Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the Examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the Examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led
Appeal No. 1999-0855
Application No. 08/730,468
6
to
modify the prior art or to combine prior art references to
arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion, or implication in the prior art as a
whole
or knowledge generally available to one having ordinary skill
in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S.
825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories,
Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the Examiner are an essential
part
of complying with the burden of presenting a prima facie case
of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24
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Application No. 08/730,468
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USPQ2d
1443, 1444 (Fed. Cir. 1992).
With respect to independent claims 17 and 21, the
Examiner, as the basis for the obviousness rejection, proposes
to modify the disclosure of APA. According to the Examiner,
APA discloses the claimed invention except for the feature of
building the sort tree only large enough to hold the data
records entered (page 3 of the Office action mailed February
28, 1997, Paper No. 4). To address this deficiency, the
Examiner turns to the Amsbury reference, which describes a
balancing technique for a static BST (binary sort tree), and
asserts the obviousness to the skilled artisan of constructing
a tournament tree of the required size
“ . . . because otherwise the unused nodes waste volatile
memory space.” (Id.).
After reviewing Appellant’s arguments in response, we are
in general agreement with Appellant that the Examiner has not
established a prima facie case of obviousness since proper
motivation for making the proposed combination has not been
established. In our view, the Amsbury reference provides
nothing more than a suggestion to balance sort trees to ensure
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Application No. 08/730,468
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that
“ . . . [t]here is never more than one unattached subtree per
level. (Amsbury, page 457). The Examiner has provided no
indication as to how and where the skilled artisan might have
found it obvious to apply the teachings of Amsbury to modify
APA to arrive at the particular sorting procedure of the
claimed invention. The mere fact that the prior art may be
modified in the manner suggested by the Examiner does not make
the modification obvious unless the prior art suggested the
desirability of the modification. In re Fritch, 972 F.2d
1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir.
1992).
We are in further agreement with Appellant (Brief, page
8) that, even assuming arguendo that proper motivation exists
for combining APA with Amsbury, the proposed combination would
not result in the invention as claimed. Each of the appealed
independent claims 17 and 21 require the initialization of a
sort tree in combination with the entry of data record
identifiers into the sort tree, a feature which eliminates the
need to know the number of records before building a sort
tree. We agree with Appellant that Amsbury, in contrast, at
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most suggests only the determination of the number of data
records to then decide how large the sort tree should be.
There is no indication on the record by the Examiner as to how
the proposed combination of APA and Amsbury would meet the
specifics of the language of the claims on appeal. In order
for us to sustain the Examiner’s rejection under 35 U.S.C. §
103, we would need to resort to speculation or unfounded
assumptions or rationales to supply deficiencies in the
factual basis of the rejection before us.
In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA
1967), cert. denied, 389 U.S. 1057 (1968), reh’g denied, 390
U.S. 1000 (1968).
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Application No. 08/730,468
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In conclusion, since the Examiner has not established a
prima facie case of obviousness, the 35 U.S.C. § 103 rejection
of independent claims 17 and 21, and claims 18-20, 22, and 23
dependent thereon, is not sustained. Therefore, the decision
of the Examiner rejecting claims 17-23 is reversed.
REVERSED

JOSEPH F. RUGGIERO )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
PARSHOTAM S. LALL ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )
JFR:hh
Appeal No. 1999-0855
Application No. 08/730,468
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LAWRENCE W. GRANATELLI
FENWICK & WEST, LLP
TWO PALO ALTO SQUARE
PALO ALTO, CA 94306