Ex Parte Wolfson et al

Board of Patent Appeals and Interferences

Aug 31, 2009

10264988 (B.P.A.I. Aug. 31, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CHARLES DANIEL WOLFSON and CONSTANCE JANE
NELIN
____________________

Appeal 2009-000136
Application 10/264,9881
Technology Center 2100
____________________

Decided: August 31, 2009
____________________

Before JOSEPH L. DIXON, JAY P. LUCAS, and STEPHEN C. SIU,
Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal from a final rejection of claims 1 and 3-37 under
authority of 35 U.S.C. § 134(a). Claim 2 was cancelled. (App. Br. 4, top).

1 Application filed October 4, 2002. The real party in interest is International
Business Machines Corporation.
Appeal 2009-000136
Application 10/264,988
The Board of Patent Appeals and Interferences (BPAI) has jurisdiction
under 35 U.S.C. § 6(b).

Appellants’ invention relates to implementing asynchronous
messaging to use and control a database operation. In the words of
Appellants:
The new features described here can eliminate the
administrative complexities, latency and scalability limitations
of the conventional methods for providing asynchronous access
to database operations. In accordance with the newly described
features, an asynchronous messaging engine executes as an
internal process, or agent, within a database system and avails
itself of database system capabilities, such as shared memory,
buffer pools, and database process controls. The database,
therefore, is able to directly monitor defined asynchronous
messaging service connections, receive asynchronous messages
directly from the asynchronous messaging service, and store the
messages directly within the same in-memory and on-disk
storage structures used by the database, thereby reducing both
the amount of memory consumed and the speed with which the
messages can be accessed by database operations.
These new features can eliminate the need for external
asynchronous message data exchange processes, thereby
eliminating the need to start and stop such external data
exchange processes independently from the database. By
eliminating external data exchange processes associated with
asynchronous messaging communications, latency associated
with the extra hop conventionally required to move data from
an external data exchange process to the database is eliminated.
Scalability is improved by eliminating the need for batch
operations, database staging tables, and multiple tables per
queue, thereby reducing the complexity of database operations.
Because the asynchronous messaging engine executes as an
agent within the database system and avails itself of database
system capabilities, such as shared memory, buffer pools, and
process controls, the new features allow support for an
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unlimited array of new asynchronous communications patterns
between a database and applications/clients.
(Spec. 4, l. 10 to 5, l. 8).
Claim 1 is exemplary:
1. An asynchronous data agent for use within a database
having a plurality of tables, comprising: an asynchronous
message listener integrated within the database, the
asynchronous message listener coupled to a message queue
external to the database and suitable for receiving a message
from a message source, the asynchronous message listener
configured to cause the message to be processed from the
message queue and to cause interaction with the database based
on the message.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Chandra 6,058,389 May 02, 2000
Parsons, Jr. 6,085,247 Jul. 04, 2000
Williams 2002/0095596 A1 Jul. 18, 2002

Appellant Admitted Prior Art (AAPA) on page 2, lines 19-23
REJECTIONS
The Examiner rejects the claims as follows:

R1: Claims 1, 3-27 and 29-36 stand rejected under 35 U.S.C. § 103(a) for
being obvious over Chandra in view of AAPA.
R2: Claim 28 stands rejected under 35 U.S.C. § 103(a) for being obvious
over Chandra in view of AAPA and further in view of Parsons.
R3: Claim 37 stands rejected under 35 U.S.C. § 103(a) for being obvious
over Chandra in view of AAPA and further in view of Williams.

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Groups of Claims:
The claims will be considered together, with claim 1 as representative.

See 37 C.F.R. § 41.37 (c) (vii). See also In re McDaniel, 293 F.3d
1379, 1383 (Fed. Cir. 2002).

Appellants contend that the claimed subject matter is rendered
obvious by Chandra and AAPA alone, or in combination with Parsons or
Williams, for failure of the references to teach certain key limitations. The
Examiner contends that each of the claims is properly rejected.
Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Briefs and the Answer for their respective details.
Only those arguments actually made by Appellants have been considered in
this opinion. Arguments that Appellants could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.

We affirm the rejections.
ISSUE
The issue is whether Appellants have shown that the Examiner erred
in rejecting the claims under 35 U.S.C. § 103(a). The issue turns on whether
Chandra and AAPA teach or suggest the message queue external to the
database as claimed.
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FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellants have invented a database method for accepting and acting on
messages sent asynchronously to a database. (Spec. 7, ll. 17-23). To
avoid delays inherent when such messages were queued external to the
database (Spec. 3, ll. 3-7), the invention incorporates message listener
objects into a data agent within the database server to accept messages
from a queue and accumulate them for processing or actually perform the
processing, depending the nature of the listener. (Spec. 7, 8).
2. Chandra teaches a message queuing system that is integrated into a
database system. (Abstract) (Fig. 3). The system includes data files for
holding the data used by application programs (322), queue tables
holding queues and messages for processing the data (324) as well as
files of database objects (318). (Fig. 3; col. 6, ll. 20-29). Messages are
processed asynchronously by the system within the database. (Col. 1, l.
33).
PRINCIPLES OF LAW
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).

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“In reviewing the [E]xaminer’s decision on appeal, the Board must
necessarily weigh all of the evidence and argument.” In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992).
“It is common sense that familiar items may have obvious uses
beyond their primary purposes, and a person of ordinary skill often will be
able to fit the teachings of multiple patents together like pieces of a puzzle.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 402 (2007).

“A court must ask whether the improvement is more than the
predictable use of prior-art elements according to their established
functions.” Id. at 401.

[Admitted Prior Art] “The term ‘prior art’ as used in section 103
refers at least to the statutory material named in 35 U.S.C. § 102. . . .
However, section 102 is not the only source of section 103 prior art. Valid
prior art may be created by the admissions of the parties.” Riverwood Int’l
Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354 (Fed. Cir. 2003) (citations
omitted). However, while a reference can become prior art by admission,
that doctrine is inapplicable when the subject matter at issue is the inventor’s
own work. Id.

Our reviewing court states in In re Zletz, 893 F.2d 319, 321(Fed. Cir.
1989), that “claims must be interpreted as broadly as their terms reasonably
allow.” Our reviewing court further states that “the words of a claim ‘are
generally given their ordinary and customary meaning.’” Phillips v. AWH
Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal citations
omitted). The “ordinary and customary meaning of a claim term is the
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meaning that the term would have to a person of ordinary skill in the art in
question at the time of the invention, i.e., as of the effective filing date of the
patent application.” Id. at 1313.

ANALYSIS
From our review of the administrative record, we find that Examiner
has presented a prima facie case for the rejections of Appellants’ claims
under 35 U.S.C. § 103(a). The prima facie case is presented on pages 3-13
of the Examiner’s Answer. In opposition, Appellants present a number of
arguments.
Arguments with respect to the rejection
of claims 1, 3 to 27 and 29 to 36
under 35 U.S.C. § 103(a) [R1]

Appellants first contend that the Examiner erred in rejecting the noted
claims “because Chandra fails to teach or suggest the claimed ‘message
queue.’” (App. Br. 15, middle). More specifically, Appellants assert that the
Examiner has admitted that “the database files 322 and 324 clearly fails [sic]
to teach or suggest ‘a message queue external to the database’, as recited in
claim 1.” (App. Br. 16, middle) (emphasis omitted).
In construing claim 1, we find that the terms database system and
database server are not well distinguished in this art. Note, for example, in
the Specification’s Figure 2 that database server 201 is shown to contain
database system 202; while in the reference Chandra, Figure 3, database
system 304 is shown to contain database server 310. Thus, when the claim
calls for a message queue external to the database, we may fairly and
broadly interpret the claim and remain consistent to the general meaning of
the terms. (See Phillips v. AWH Corp, cited above.)
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Chandra teaches data file 322; “File 1” in Figure 3 contains the data
used by the client applications 301 and 302. (Col. 6, l. 26). In the same
Figure 3, “File 2” is shown containing “queue tables comprising queues and
messages of queues” that are at least partially on a separate database 324.
(Col. 6, l. 46). Thus, contrary to the Examiner’s understanding, we find that
Chandra does meet the limitation of claim 1 concerning the message queue
separate from the database.
However, we also find that AAPA teaches that it was known in the art
to store the queue of messages (224 and 226) separate from the databases.
(Spec. 3, ll. 4-6). We agree with the Examiner that AAPA supplements the
teaching of a queue of messages external from the database. (Answer 14,
top).
Appellants then argue that motivation is lacking for combining the
teachings of AAPA and Chandra. (App. Br. 17, middle).
Appellants’ arguments and cited case law (App. Br. 19, middle) do
not take in account the teachings of KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
398 (2007). The TSM (teaching, suggestion, and motivation) test is no
longer the only justification for properly combining references, and
Appellants’ arguments concerning motivation (App. Br. 19) are no longer
operative.

In determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed
purpose of the patentee controls. What matters is the objective
reach of the claim. If the claim extends to what is obvious, it is
invalid under § 103.
(KSR, 550 U.S. at 419)

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In the instant case, the Examiner has presented teachings from
analogous art in Chandra and from Appellants’ application that the message
queue can be external to the database. We find the teachings to be properly
combined and to provide the requisite basis for rendering the claims
obvious. Appellants have not demonstrated that the rejection was in error.

Arguments with respect to the rejection
of claims 28 and 37
under 35 U.S.C. § 103(a) [R2] and [R3]

Appellants’ arguments concerning claims 28 and 37 depend on the
same rationale as recited above. (App. Br. 21, middle). As such, we do not
find error in the respective rejections of these claims.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in rejecting 1 and 3-37.

DECISION
The Examiner’s rejections [R1], [R2], and [R3] of claims 1 and 3-37
are Affirmed.
AFFIRMED

peb

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