Ex Parte Vishnubhotla

Board of Patent Appeals and Interferences

Jan 13, 2011

11175061 (B.P.A.I. Jan. 13, 2011)

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.
11/175,061 07/05/2005 Prasad R. Vishnubhotla AUS920050147US1 2538
48916 7590 01/13/2011
Greg Goshorn, P.C.
9600 Escarpment
Suite 745-9
AUSTIN, TX 78749
EXAMINER
VO, TRUONG V
ART UNIT PAPER NUMBER
2156
MAIL DATE DELIVERY MODE
01/13/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PRASAD R. VISHNUBHOTLA
____________________

Appeal 2009-008510
Application 11/175,0611
Technology Center 2100
____________________

Before JOSEPH L. DIXON, HOWARD B. BLANKENSHIP, and JAY P.
LUCAS, Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL2

1 Application filed July 5, 2005. The real party in interest is International
Business Machines Corp.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-008510
Application 11/175,061

STATEMENT OF THE CASE
Appellant appeals from a final rejection of claims 1 to 20 under
authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).

We affirm. In addition, we apply a new ground of rejection under
35 U.S.C. § 101 to claims 1 to 7 and 15 to 20.

Appellant’s invention relates to a method of integrating file system
events into a database management system (DBMS) (claim 1). In the words
of Appellant:
The claimed subject matter employs file system
callback mechanisms associated with
asynchronous and non-blocking input/output (I/O)
functions to communicate the completion of file
creation, deletion and update operations to a
RDBMS. The callbacks are then employed to fire
database triggers.
(Spec. 3, ¶ [0010]).

The following claims illustrate the claims on appeal:
Claims 1, 8, and 15:
1. A method for integrating file system events
into a database management system (DBMS),
comprising:

designating a file of interest;

detecting a file state change event associated
with the file of interest;

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updating a file events table of a database
upon a detection of the file state change event;

generating a database trigger upon a change
in the file events table; and

updating the database with data from the file
of interest upon receipt of the database trigger.

8. A system for integrating file system events
into a database management system (DBMS),
comprising:

a database;

a file events table associated with the
database;

a file of interest;

logic for detecting a file state change event
associated with the file of interest;

logic for updating the file events table upon
a detection of the file state change event;

a database trigger generated upon a change
in the file events table; and

logic for updating the database with data
from the file of interest upon receipt of the
database trigger.

15. A computer programming product for
integrating file system events into a database
management system (DBMS), comprising:

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a memory;

logic, stored on the memory, for designating
a file of interest;

logic, stored on the memory, for detecting a
file state change event associated with the file of
interest;

logic, stored on the memory, for updating a
file events table of a database upon a detection of a
file state change event;

logic, stored on the memory, for generating
a database trigger upon a change in the file events
table; and

logic, stored on the memory, for updating
the database with data from the file of interest
upon receipt of the database trigger.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Burns US 6,088,694 Jul. 11, 2000

REJECTIONS
The Examiner rejects the claims as follows:

R1: Claims 1 to 20 stand rejected under 35 U.S.C. § 102(b) for being
anticipated by Burns.
R2: Claims 8 to 14 stand rejected under 35 U.S.C. § 101 for being non-
statutory subject matter.

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We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUES
The issues involve whether Appellant has shown that the Examiner
erred in rejecting the claims under 35 U.S.C. §§ 102(b) and 101. The
anticipation issue specifically turns on whether Burns teaches Appellant’s
claim limitations “generating a database trigger upon a change in the field
events table” and “updating the database with data from the file of interest
upon receipt of the database trigger,” as recited in claim 1. The
35 U.S.C. § 101 issue turns on whether exemplary claim 1 qualifies as
statutory subject matter under the Bilski v. Kappos and Parker v. Flook
decisions, cited infra; on whether claim 8 qualifies is software per se; and
whether the program product of claim 15 is disqualified by the Nuijten
ruling, cited infra.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
Disclosure
1. Appellant has invented a method, system, and program product that
integrates file system events into a database management system (claims 1,
8, and 15). The claimed method includes generating a database trigger upon
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a change in a file events table and updating the database with data from a file
of interest upon receiving the database trigger (claim 1). File events are also
known as actions (e.g., a file creation, a file deletion, or a file modification)
(Spec. 10, ¶ [0033]).
Burns
2. The Burns reference teaches integrating file system events into a
database management system. (See Abstract, col. 7, ll. 12 to 17.) Burns also
teaches generating a structured query logic (SQL) trigger associated with an
unlinking of an old version and a linking of a new version of a file. (See col.
14, ll. 25 to 32.) Burns further teaches updating the metadata in a database
table with data from the file upon receiving the SQL trigger. (See col. 8, ll.
38 to 40, 43, and 44.) Burns’ file operations include updating or appending
a file. (See col. 14, ll. 27 to 28.)

PRINCIPLE OF LAW
Appellant has the burden on appeal to the Board to demonstrate
Examiner error. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006).

ANALYSIS
Arguments with respect to the rejection
of claims 1 to 20 and
under 35 U.S.C. § 102(b) [R1]

The Examiner has rejected the noted claims for being anticipated by
the Burns reference, pages 3 to 11 of the Examiner’s Answer.
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Appellant argues that the Examiner mischaracterizes the metadata and
table 60 as a “file events table.” (App. Br. 14, middle). Appellant argues
that no trigger is based upon a change in either the metadata or table 60 (i.e.,
Burns does not suggest updating a file events table because Burns does not
even suggest a file events table.) (Id.).
We disagree with Appellant’s argument for the following reasons.
Appellant has invented a method, system, and program product that
integrates file system events into a database management system (FF#1).
The method includes generating a database trigger upon a change in a file
events table and updating the database with data from a file of interest upon
receiving the database trigger (id.). File events are also known as actions
(e.g., a file creation, a file deletion, or a file modification) (id.).
In comparison, the Burns reference teaches integrating file system
events into a database management system (FF#2). Burns also teaches a
structured query logic (SQL) trigger (i.e., Appellant’s claimed “database
trigger”) associated with an unlinking of an old version and a linking of a
new version of a file (id.). Burns further teaches updating the metadata in a
database table (i.e., cited as Appellants’ claimed “file events table”) with
data from the file when the SQL trigger is received (id.). Burns’ file
operations (i.e., the claimed “file events”) include updating or appending a
file (id.).
We find that Burns’ teachings of unlinking of an old version and
linking of a new version of a file are no different from Appellant’s claimed
“updating the database with data from a file of interest” (claim 1). Further,
we find that the claimed “generating” step of claim 1 reads on Burns’
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teaching for the SQL triggering the unlinking and linking of a file in a file
events table.
For the above stated reasons, Appellant has failed to demonstrate error
in the Examiner’s rejection. Accordingly, we affirm.

Argument with respect to the rejection
of claims 8 to 14 and
under 35 U.S.C. § 101 [R2]

In the Answer, the Examiner rejected the noted claims for being
directed to non-statutory subject matter under 35 U.S.C. § 101, pages 11 to
12.
Appellant argues: “To store [a ‘database,’ a ‘file events table,’ or a
‘file of interest,’] physical modifications must be made to the physical
memory or, otherwise, nothing would be stored. In other words, a physical
system is inherently part of the claimed subject matter and, therefore, … [is]
statutory.” (Rep. Br. 14, middle).
Data structures not claimed as embodied in computer-readable media
are descriptive material per se and are not statutory because they are not
capable of causing functional change in the computer. (See In re
Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994)).
In accordance with the teachings of Warmerdam, cited above, we find
that the system of claim 8 is software per se. That is, the elements of claim
1 are not embodied in any tangible computer-readable medium. We thus
find that the system of claim 8 is non-statutory subject matter. Accordingly,
we affirm.
Claims 9 to 14 fall with claim 8.

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REJECTION OF CLAIMS 1 TO 7 AND 15 TO 20 UNDER
37 C.F.R. § 41.50(b) [R3]
We make the following new ground of rejection using our authority
under 37 C.F.R. § 41.50(b).
Rejection:
Claims 1 to 7 and 15 to 20 are rejected under 35 U.S.C. § 101, as
being directed to non-statutory subject matter.
“[The Supreme] Court’s precedents establish that the machine-or-
transformation test is a useful and important clue, an investigative tool, for
determining whether some claimed inventions are processes under §101.
The machine-or-transformation test is not the sole test for deciding whether
an invention is a patent-eligible ‘process.’” See Bilski v. Kappos, 130 S.Ct.
3218, 3227 (2010).
Since exemplary claim 1 merely recites, in relevant part, “a file of
interest,” “a file state change event,” “a file events table,” and “a database
trigger,” we find that the claim fails to recite a machine or transformation of
an article of manufacture. None of the above-stated claim elements qualify
as a machine. Nor does the claim limitation “updating the database with
data from the file of interest upon receipt of the database trigger” qualify as
a transformation of an article of manufacture in accordance with the
transformation prong of the machine-or-transformation test. Rather, these
are merely abstract ideas that comport with the teachings of Bilski, 130 S.Ct.
at 3229.
In Bilski, the Supreme Court held that there are other tools for
establishing subject matter eligibility under 35 U.S.C. § 101. Those tools
involve an inquiry into whether a process is merely an abstract idea. “In
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searching for a limiting principle, this Court’s precedents on the
unpatentability of abstract ideas provide useful tools.” (Id.).
According to Bilski, one tool for determining whether a process is an
abstraction is the decision in Parker v. Flook, 437 U.S. 584, 590 (1978)
(holding that the involvement of the machine or transformation in the
claimed process must not merely be insignificant extra-solution activity).
“The Court, therefore, need not define further what constitutes a patentable
‘process,’ beyond pointing to the definition of that term provided in § 100(b)
and looking to the guideposts in Benson, Flook, and Diehr.” Bilski v.
Kappos, 130 S.Ct. 3218, 3231 (2010).
Regarding claim 1, we find that there is not even a machine or
transformation recited in independent claim 1 that would have qualified as
“insignificant extra-solution activity.” We thus find that claim 1’s
recitations are not statutory subject matter in accordance with the teachings
of Bilski and Flook.
Turning to the program product of independent claim 15, the claim
recites, in relevant part, “a memory.”
“A transitory, propagating signal like Nuijten’s is not a ‘process,
machine, manufacture, or composition of matter.’ Those four categories
define the explicit scope and reach of subject matter patentable under 35
U.S.C. § 101; thus, such a signal cannot be patentable subject matter.” In re
Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007).
We note that Appellant discloses the claimed “memory” “can be any
means that … propagates … data.” (Spec. 6, ¶ [0020]). We find
Appellant’s disclosure significant, in that only signal waves are propagated
in the context of the programming product of claim 15. In accordance with
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Nuijten’s teaching that a signal cannot be patentable subject matter, we
reject claim 15 as outside the scope of 35 U.S.C. § 101.
Claims 16 to 20 fall with claim 15.

CONCLUSIONS OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellant has not shown that the Examiner erred in rejecting claims 1 to 20
under rejections R1 and R2. Above, we added a new ground of rejection
[R3] under 35 U.S.C. § 101 to claims 1 to 7 and 15 to 20.

DECISION
We affirm the Examiner’s rejections R1 and R2 of claims 1 to 20. In
addition, in the rejection [R3] we concluded that Appellant’s claims 1 to 7
and 15 to 20 were directed to non-statutory subject matter.
With respect to the affirmed rejections, 37 C.F.R. § 41.52(a)(1)
provides that “Appellant may file a single request for rehearing within two
months from the date of the original decision of the Board.”
In addition to affirming the Examiner’s rejections of one or more
claims, this decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
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37 C.F.R. § 41.50(b) also provides that 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 rejection to
avoid termination of the appeal as to the rejected claims:

(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(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 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.

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).

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AFFIRMED
37 C.F.R. § 41.50(b)

peb

GREG GOSHORN, P.C.
9600 ESCARPMENT
SUITE 745-9
AUSTIN, TX 78749
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