Ex Parte Webster et al

Board of Patent Appeals and Interferences

Mar 17, 2010

10215606 (B.P.A.I. Mar. 17, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THOMAS A. WEBSTER JR,
ROBERT J. DAVIS, and
ANGELA N. KNELL
____________

Appeal 2009-008515
Application 10/215,606
Technology Center 3600
____________

Decided: March 17, 2010
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-008515
Application 10/215,606

2
STATEMENT OF THE CASE
Thomas A. Webster Jr., et al. (Appellants) seek our review under 35
U.S.C. § 134 (2002) of the final rejection of claims 1-18. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We REVERSE.1

THE INVENTION
The invention relates to data warehouse solutions.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A modeling tool for determining the impact that a data warehouse
solution will have upon a business organization considering
implementing said data warehouse solution, said modeling tool
comprising:
a server computer including:
at least one business impact model comprising a
mathematical representation of a data warehouse solution, said
business impact model including an assessment questionnaire, said
assessment questionnaire including a plurality of questions relating to
said business organization considering implementing said data
warehouse solution; and
a business impact modeling application for calculating a
value of said data warehouse solution to said business organization
from said business impact model and answers provided to said
assessment questions;

1 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,”
filed Aug. 21, 2008) and the Examiner’s Answer (“Answer,” mailed Dec. 2,
2008).
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a client computer electronically connectable to said server
computer for receiving a copy of said at least one business impact
model, said client computer providing offline collection of answers to
said assessment questions and offline calculation of said value of said
data warehouse solution to said business organization from said copy
of said business impact model and answers provided to said
assessment questions; and
an application residing on said server computer for keeping a
record of copies of said at least one business impact model received
by said client computer.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Ruffin
Cimini
US 6,219,654 B1
US 2003/0055718 A1
Apr. 17, 2001
Mar. 20, 2003
The following rejections are before us for review:
1. Claims 1, 2, 4, 6, 7, 10, 11, 13-15, and 17 are rejected under 35 U.S.C.
§102(e) as being anticipated by Ruffin.
2. Claims 3, 5, 8, 9, 12, 16, and 18 are rejected under 35 U.S.C. §103(a)
as being unpatentable over Ruffin and Cimini.

ISSUES
The issue with respect to the rejection of claims 1, 2, 4, 6, 7, 10, 11,
13-15, and 17 under 35 U.S.C. §102(e) as being anticipated by Ruffin is
whether Ruffin describes, expressly or inherently, the claim limitations
(claim 1):
• “a client computer electronically connectable to said server
computer for receiving a copy of said at least one business
impact model”;
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• “said client computer providing offline collection of answers to
said assessment questions”;
• “said client computer providing . . . offline calculation of said
value of said data warehouse solution to said business
organization from said copy of said business impact model and
answers provided to said assessment questions.”
See Br. 8-10.
The issue with respect to the rejection of claims 3, 5, 8, 9, 12, 16, and
18 under 35 U.S.C. §103(a) as being unpatentable over Ruffin and Cimini is
the same as that for the §102(e) rejection. See supra. With respect to this
rejection, the Appellants only argue that Cimini “does not include any
teaching concerning” the claim limitations (of claim 1) listed above. Br. 11.
As the Examiner did not take the position that these limitations are described
in Cimini, analyzing Ruffin rather than Cimini will resolve the issue of
whether the cited prior art discloses the limitations listed above.

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
1. Claim 1 calls for a server that includes “at least one business impact
model.”
2. According to claim 1, the business impact model comprises (a) a
mathematical representation of a data warehouse solution; and
includes (b) an assessment questionnaire including “a plurality of
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questions relating to [a] business organization considering
implementing said data warehouse solution.”
3. The Examiner found Ruffin describes the server and included
business impact model as claimed. Answer 4. The Appellants do not
dispute this finding.
4. Claim 1 also calls for a client computer that is electronically
connectable to the server “for receiving a copy of said at least one
business impact model.”
5. The claim 1 client computer is electronically connectable to the server
and is capable of receiving a copy of the business impact model from
the server, which server and business impact model the Examiner has
found described in Ruffin and not disputed (see supra).
6. According to claim 1, the client computer also provides:
• “offline collection of answers to said assessment questions”;
and,
• “offline calculation of said value of said data warehouse
solution to said business organization from said copy of said
business impact model and answers provided to said assessment
questions.”
7. Ruffin is directed to a system for performing cost analysis for a
proposed information technology implementation.
8. The Examiner found the claim limitation “a client computer
electronically connectable to said server computer for receiving a
copy of said at least one business impact model” (claim 1) is
described at col. 9, ll. 34-41, and element 502 of Fig. 5. Answer 4.
9. Ruffin Col. 9, ll. 34-41 reads:
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The targeted customers are solicited via marketing
campaigns which preferably involve techniques
such as telephonic surveys, mail-based or on-line
questionnaires etc . . . 502 all seeking to elicit a
from the potential customer, responses 503, which
at a high-level will enable the provider to
determine whether the customer is sufficiently
interested, knowledgeable and properly situated to
benefit from the proffered IT solution.
10. Fig. 5 of Ruffin depicts a customer qualification process portion of
Ruffin’s business solution assessment. See col. 5, ll. 27-28.
11. Inside the box in Fig. 5 identified as element 502 is the phrase
“solicitation of selected customers.”
12. The Examiner found the claim limitation “said client computer
providing offline collection of answers to said assessment questions”
(claim 1) is described at col. 9, ll. 42-45 and elements 503 and 504 of
Fig. 5. Answer 4.
13. Ruffin: Col. 9, ll. 42-45 reads: “The responses 503 are input to a BSA
database 504 which may be implemented as a single database table or
grouping of tables and which is illustratively depicted as a portion of
data space 404.”
14. Inside the boxes in Fig. 5 identified as elements 503 and 504 are the
phrases “gather responses to solicitation” and “input into BSA
database,” respectively.
15. The Examiner found the claim limitation “said client computer
providing ... offline calculation of said value of said data warehouse
solution to said business organization from said copy of said business
impact model and answers provided to said assessment questions”
(claim 1) is described at Ruffin: col. 10, ll. 29-32.
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16. Ruffin: Col. 10, ll. 29-32 reads: “Accordingly, the use of a software
tool 506 such as the savings from consolidation (CONSAVE) tool
may offer a potential qualified participant a glimpse at the advantages
of undertaking a consolidation BSA.”
17. In response to the Appellants arguments in the Brief, the Examiner
has also stated: “Ruffin indeed discloses a client computer (i.e.,
engine 401 [of Fig. 4] located at peripheral device 306 [of Fig. 3])
electronically connectable to said server computer (i.e., system 300
[of Fig. 3]) . . . .” Answer 9.
18. The Examiner has indicated that the various operations previously
indicated as described in Ruffin (see supra) are performed by engine
401 located at peripheral device 306. Answer 9-10.
19. Fig. 3 depicts “a typical data processing environment wherein the
present [Ruffin] invention may be practiced.” Ruffin Col. 5, ll. 21-22.
20. Element 300 in Fig. 3 is a diagram of a system composed of various
elements such as “central processing unit” [CPU] 303.
21. Inside the box in Fig. 3 identified as element 306 is the phrase
“peripheral devices.” It is depicted as communicating with CPU 303.
22. According to Ruffin,
The present invention relates to processes and systems
for enabling the foregoing analysis. In a preferred
implementation, the system is embodied in a data
processing system such as that depicted as item 300 in
FIG. 3. The system includes components typically
associated with conventional data processing systems
including without limitation an input device 301 such as
a keyboard or other such input apparatus, and a display
unit 302, both coupled either locally or via a network
connection to a central processing unit (CPU) 303 for
exchanging information therewith. The display unit 302
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may be used to present questionnaires required to elicit
information from the customer, and the input device is
utilized to gather from the customer responsive
information required for implementing the inventive
processed presented herein.
Ruffin: Col. 8, ll. 20-35.
23. Ruffin further states that,
the CPU may be further coupled either directly or
remotely to other peripheral devices 306 which may
include additional computer systems via local or wide
area networks and the Internet, and which may further
include such peripheral devices as printers, facsimile
machines, scanners, network connection devices, tape
drive units, etc . . . .
Ruffin: Col. 8, ll. 41-47.
24. Fig. 4 depicts “the functional interrelationship of data and processes
implemented during the inventive business solution assessment.”
Ruffin: Col. 5, ll. 23-25.
25. Inside the box in Fig. 4 identified as element 401 is the phrase
“question & answer engine.”
26. According to Ruffin, “the customer interacts with the question and
answer engine 401 which presents the various questionnaires to the
customer and provides the customer’s response to the computer
system 300.” Ruffin: Col. 8, l. 66 - col. 9, l. 2.

PRINCIPLES OF LAW
Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
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art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).
Obviousness
Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.’
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, and (3) the level of skill
in the art. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also
KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”) The Court in Graham further noted that evidence of
secondary considerations “might be utilized to give light to the
circumstances surrounding the origin of the subject matter sought to be
patented.” Graham, 383 U.S. at 17-18.

ANALYSIS
The rejection of claims 1, 2, 4, 6, 7, 10, 11, 13-15, and 17 are rejected under
35 U.S.C. §102(e) as being anticipated by Ruffin.
Claim 1 is drawn to an apparatus. The claimed apparatus comprises
two elements - a server and a “client computer electronically connectable to
said server.” The Appellants focus our attention on the client computer,
arguing that various functions recited in the claim for this client computer
are not described in Ruffin as the Examiner has asserted.
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We have carefully reviewed Ruffin. There is no express description
of a client computer. The Examiner has indicated that Ruffin’s peripheral
device 306 is a client computer and that it carries engine 401 that performs
the functions at issue. FF 18. But Ruffin does not expressly state that
peripheral device 306 can be a client computer as that phrase is customarily
understood, that is, a computer that communicates with a server. However,
the types of devices Ruffin exemplifies as peripheral device 306 “may
include additional computer systems via local or wide area networks and the
Internet”. FF 23. The disclosure that peripheral device 306 can be an
additional computer system is a description of a computer-server
arrangement and such an arrangement is most commonly associated with
client-server systems. Accordingly, we are satisfied that Ruffin implicitly
describes a client computer.
However, we do not find that Ruffin describes, expressly or
inherently, locating engine 401 in peripheral device 306, let alone in the
particular embodiment of Ruffin’s peripheral device 306 that would
implicitly include the client computer. The Examiner has not pointed to
where, in Ruffin, the question and answer engine 401 is expressly described
as residing in a client computer, nor can we find it. We recognize that
Ruffin teaches that the customer interacts with the question and answer
engine 401. But how this is accomplished is not clearly stated. Ruffin does
describe presenting users with surveys or questionnaires via a display unit
“coupled either locally or via a network connection to” the CPU of the
system. FF 22. But there is no description, expressly or inherently, of a
client computer with question and answer engine 401. It is a possible that
Ruffin’s question and answer engine 401 could reside on a client computer
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and given that Ruffin does not preclude a client computer from including
engine 401 and given Ruffin’s broad disclosure of networks and the
suggestion that customers can remotely interact with questionnaires and
surveys, a case could be made that Ruffin would lead one of ordinary skill in
the art to a client computer having question and answer engine 401. But the
difficulty is that the rejection is under §102(e). “Inherent anticipation
requires that the missing descriptive material is ‘necessarily present,’ not
merely probably or possibly present, in the prior art.” Trintec Indus., Inc. v.
Top-U.S.A. Corp., 295 F.3d 1292, 1295 (Fed. Cir. 2002) (quoting In re
Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999)).
Furthermore, even if we assume arguendo that Ruffin describes,
inherently, a client computer carrying question and answer engine 401, this
is not the end of the story. To anticipate the claimed subject matter, Ruffin
must describe, expressly or inherently, every element claimed. The “four
corners of a single, prior art document [must] describe every element of the
claimed invention.” Xerox, 458 F.3d 1310, 1322 (quoting Advanced Display
Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000). In that
regard, claim 1 requires the client computer to function such that it is
capable of performing the acts of “receiving a copy of said at least one
business impact model,” “offline collection of answers to said assessment
questions”; and, “offline calculation of said value of said data warehouse
solution to said business organization from said copy of said business impact
model and answers provided to said assessment questions.” The Examiner
pointed to certain passages in Ruffin (FF8, 12 and 16) as expressly
describing these operations but we have been unable to find there a client
computer expressly describing the functions as claimed. See FF 9-11, 13,
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14, 16, and 17. Nor has the Examiner made the case that Ruffin inherently
describes a client computer having the functions as claimed such that the
Appellants were required to prove that the subject matter shown to be in the
prior art does not possess those functions.2
For the foregoing reasons, we find that a prima facie case of
anticipation has not been established for the subject matter of claim 1. We
reach the same conclusion as to the other independent claims, specifically, 6
(apparatus), 10 (method), and 14 (method). Each of these claims recites
client computers having functions which we do not find described, expressly
or inherently, in Ruffin for the reasons discussed.

The rejection of claims 3, 5, 8, 9, 12, 16, and 18 under 35 U.S.C. §103(a) as
being unpatentable over Ruffin and Cimini.
Claims 3, 5, 8, 9, 12, 16, and 18 depend on independent claims whose
rejection under §102 we have not sustained for the foregoing reasons. The

2 “A patent applicant is free to recite features of an apparatus either
structurally or functionally. . . . Yet, choosing to define an element
functionally, i.e., by what it does, carries with it a risk. As our predecessor
court stated in Swinehart , 439 F.2d 210, 213:
where the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.

See also In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).

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Examiner has not explained why the subject matter of the independent
claims would have been obvious over Ruffin to one of ordinary skill in the
art.
Accordingly, the rejection of these claims stands or falls on whether
Ruffin describes, expressly or inherently, the subject matter of the
independent claims. Since we have found that Ruffin does not describe,
expressly or inherently, the subject matter of the independent claims, a prima
facie case of obviousness for the subject matter of claims 3, 5, 8, 9, 12, 16,
and 18 has similarly not been established.

CONCLUSIONS
The rejection of claims 1, 2, 4, 6, 7, 10, 11, 13-15, and 17 under 35
U.S.C. §102(e) as being anticipated by Ruffin is not sustained.
The rejection of claims 3, 5, 8, 9, 12, 16, and 18 under 35 U.S.C.
§103(a) as being unpatentable over Ruffin and Cimini is not sustained.

DECISION
The decision of the Examiner to reject claims 1-18 is reversed.

REVERSED

mev

JAMES M. STOVER
TERADATA CORPORATION
2835 MIAMI VILLAGE DRIVE
MIAMISBURG OH 45342