Ex Parte Wu et al

Board of Patent Appeals and Interferences

Apr 13, 2012

11318074 (B.P.A.I. Apr. 13, 2012)

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.
11/318,074 12/23/2005 Ju Wu 34874-594002US 9749
64280 7590 04/13/2012
MINTZ, LEVIN, COHN, FERRIS, GLOVSKY & POPEO, P.C.
ONE FINANCIAL CENTER
BOSTON, MA 02111
EXAMINER
NOFAL, CHRISTOPHER P
ART UNIT PAPER NUMBER
2156
MAIL DATE DELIVERY MODE
04/13/2012 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 JU WU, YAN DONG,
PRASHANTHA RAMACHANDRA SHET,
and PATRICK YEE CHEUK CHENG
____________

Appeal 2010-002378
Application 11/318,074
Technology Center 2100
____________

Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and
JENNIFER S. BISK, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner‘s
rejection of claims 1-8. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm-in-part.

STATEMENT OF THE CASE
Appellants‘ invention augments a report with metadata for export to a
―non-report‖ document. See generally Spec. ¶¶ 0003-07. Claim 1 is
illustrative with key disputed limitations emphasized:
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1.A computer storage product with a computer readable medium,
comprising executable instructions to:

create a report;

augment the report with metadata including a report identifier and
parameter information; and

export the report and metadata to a non-report electronic document.

RELATED APPEALS
This appeal is said to be related to three appeals in connection with
the following applications: (1) 11/166,039; (2) 11/137,684 (Appeal No.
2010-006221); and (3) 11/137,710 (Appeal No. 2010-001624). Br. 1; Ans.
2. The ‗039 application, however, was allowed and issued as U.S. Patent
7,580,928.

THE REJECTIONS
1. The Examiner provisionally rejected claim 1 on the ground of
obviousness-type double patenting over claim 1 of Application No.
11/137,710 and Shaughnessy (US 7,015,911 B2; Mar. 21, 2006 (filed Mar.
31, 2003)). Ans. 4-6.
1

2. The Examiner provisionally rejected claim 1 on the ground of
obviousness-type double patenting over claim 1 of Application No.
11/137,684, Shaughnessy, and Houser (US 5,606,609; Feb. 25, 1997). Ans.
6-8.

1
Throughout this opinion, we refer to the Appeal Brief filed March 2, 2009
and the Examiner‘s Answer mailed August 6, 2009 (supplemented
December 1, 2009).
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3. The Examiner rejected claims 1 and 3 under 35 U.S.C. § 103(a) as
unpatentable over Shaughnessy and Nwabueze (US 6,775,675 B1; Aug. 10,
2004). Ans. 9-15.
4. The Examiner rejected claims 2 and 4-8 under 35 U.S.C. § 103(a)
as unpatentable over Shaughnessy, Nwabueze, and Power (US
2003/0004272 A1; Jan. 2, 2003). Ans. 15-19.
2

THE DOUBLE PATENTING REJECTIONS
Since Appellants present no arguments pertaining to the Examiner‘s
provisional double patenting rejections (Ans. 4-8), we summarily sustain
those rejections. See MPEP § 1205.02, 8th ed., Rev. 8, July 2010 (―If a
ground of rejection stated by the examiner is not addressed in the appellant's
brief, that ground of rejection will be summarily sustained by the Board.‖).

THE OBVIOUSNESS REJECTION OVER SHAUGHNESSY AND NWABUEZE
The Examiner finds that Shaughnessy augments a created report with
metadata as recited in independent claim 1, but does not export the report
and metadata to a non-report electronic document. Ans. 9-14, 20-26. The
Examiner, however, cites Nwabueze as teaching this feature in concluding
that the claim would have been obvious. Id. According to the Examiner,
Nwabueze‘s cube is a ―non-report electronic document‖ since it is (1) not a
report, but rather a graphical abstraction of a report, and (2) generated
responsive to manual input. Ans. 13-14, 23-24, 26.

2
But see Fin. Rej. 12 (rejecting claims 4, 7, and 8 under Power and
Nwabueze).
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Appellants argue, among other things, that since Nwabueze‘s cube
viewer automatically retrieves data from a data source, Nwabueze‘s cube is
therefore a ―report‖ as the term is defined in the Specification and therefore
not a ―non-report electronic document‖ as claimed. Br. 6-8. The issue
before us, then, is as follows:

ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Shaughnessy and Nwabueze collectively would have taught or
suggested exporting a report and metadata to a non-report electronic
document?

ANALYSIS
We begin by construing the term ―non-report electronic document.‖
Appellants define ―non-report‖ as ―an electronic document that is
constructed without the automatic retrieval (i.e., in response to computer
executable instructions) of information from a data source. Examples of
non-report electronic documents include typical business application
documents, such as a word processor document, a spreadsheet document, a
presentation document, and the like.‖ Spec. ¶ 0003 (emphasis added).
Appellants contrast ―non-report‖ electronic documents with ―reports‖ that
―refer[] to information automatically retrieved (i.e., in response to computer
executable instructions) from a data source (e.g., a database, a data
warehouse, and the like).‖ Id. (emphasis added).
These definitions of ―report‖ and ―non-report‖ are clear and
unambiguous despite their using open-ended and exemplary terms.
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Although broad, these definitions hardly lack ―clarity, deliberateness, and
precision‖ to render them non-controlling as the Examiner alleges (Ans. 24-
26). We therefore construe the terms ―report‖ and ―non-report‖ in light of
these definitions.
3

Automatically-retrieved information is a key aspect of a ―report‖ in
Appellants‘ parlance that distinguishes it from ―non-report‖ electronic
documents. In light of this distinction, we find the Examiner‘s position
(Ans. 13-14, 23-24, 26) that Nwabueze‘s cube constitutes a ―non-report
electronic document‖ problematic since it is involves automatically-retrieved
information and is therefore a ―report‖ as Appellants indicate. Br. 8.
Leaving aside the fact that Nwabueze characterizes a cube as a multi-
dimensional report, Nwabueze notes that multi-dimensional cubes can be
displayed from a defined data set through an online analytical processing
system (OLAP). Cubes can represent (1) descriptive categories or business
metrics (―dimensions‖) (e.g., a time dimension), and (2) quantitative values
(―measures‖) (e.g., the number of page views). Nwabueze, col. 1, l. 66 –
col. 2, l. 17.
As shown in Nwabueze‘s Figure 1, OLAP cube viewer 114 takes data
from server 112 and presents the cube as predefined by the user. Nwabueze,
col. 2, ll. 59-62; Fig. 1. In the method of Figure 2, a cube generator engine
(1) gathers and parses data relevant to dimensions; (2) creates a hierarchical
table structure for selected dimensions, and (3) transfers the parsed data for
each dimension to this table structure for viewing via a cube viewer engine.

3
See Phillips v. AWH Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2005) (en banc)
(noting that the Specification is the single best guide to a disputed term‘s
meaning and acts as a dictionary when it expressly defines terms recited in
the claims).
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Nwabueze, col. 8, ll. 5-24; Fig. 2. Nwabueze‘s cube viewer also displays
data from different data sources managed by an abstraction layer. See
generally Nwabueze, col. 10, l. 61 – col. 12, l. 33; Figs. 6-7.
Nwabueze‘s Figure 8A shows an exemplary presentation of an OLAP
cube 206 through an OLAP cube viewer, where the cube has (1) a row of
dimensions 210 within an interactive region 208, and (2) a row of measures
216 within results region 214. Nwabueze, col. 12, ll. 34-52; Fig. 8A.
Nwabueze‘s presentation of an OLAP cube through an OLAP cube viewer is
reproduced below:

Nwabueze’s presentation of an OLAP cube through an OLAP cube
viewer in Figure 8A

The clear import of this discussion is that the cube viewer
automatically retrieves data from a data source to render the cube. It is
therefore a ―report‖ under Appellants‘ definition—not a ―non-report
electronic document.‖ Although the Examiner correctly notes that the cube
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graphically represents an abstraction (Ans. 26), it is nonetheless rendered by
automatically retrieving data—the very essence of a ―report‖ in Appellants‘
parlance.
But the distinction between a ―report‖ and a ―non-report‖ has no
structural or functional significance here, for it merely pertains to how the
data was previously acquired—not to the data itself. That is, the functions
recited in claim 1 pertain to the data itself in terms of its creation,
augmentation, and exportation, but are not germane to the data‘s previous
acquisition (i.e., either manually or automatically), which characterizes the
data as a ―report‖ or ―non-report.‖
Therefore, we are unpersuaded of error in the Examiner‘s rejection
based on Shaughnessy‘s augmenting a report with metadata (Ans. 9-14, 20-
23) with Nwabueze‘s teaching of exporting this data to a document—albeit a
―report‖ under Appellants‘ parlance. But regardless of whether this
document data is characterized as a ―report‖ or ―non-report‖ in terms of its
previous data acquisition, the document is nonetheless merely data that is
manipulated according to the terms of claim 1—data manipulations amply
suggested by the cited prior art for the reasons indicated by the Examiner.
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 1 and claim 3 not separately argued with particularity.

THE OBVIOUSNESS REJECTION OF CLAIM 2
Since Appellants present no arguments regarding the Examiner‘s
obviousness rejection of claim 2 over Shaughnessy, Nwabueze, and Power
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(Ans. 15-16),
4
we summarily sustain the Examiner‘s obviousness rejection
of that claim. See MPEP § 1205.02.

THE OBVIOUSNESS REJECTION OF CLAIMS 4, 7, AND 8
We do not, however, sustain the Examiner‘s obviousness rejection of
claims 4, 7, and 8. In the Examiner‘s Answer, claims 2 and 4-8 are rejected
over Shaughnessy, Nwabueze, and Power. Ans. 15-19. But in the Final
Rejection (from which the appeal was taken), the Examiner rejects claims 2
and 4-8 under § 103 as follows:
ï‚· Claim 2 over Shaughnessy, Nwabueze, and Power. Fin. Rej. 11-12.
ï‚· Claims 4, 7, and 8 over Power and Nwabueze. Fin. Rej. 12-14.
ï‚· Claims 5 and 6 over Power, Nwabueze, and Shaughnessy. Fin. Rej.
14-16.
Although claim 4 depends from claim 1 which was rejected over
Shaughnessy and Nwabueze (Ans. 9-15), the Examiner‘s inconsistent
treatment of claim 4 (and claims 7 and 8 depending therefrom) noted above
represents a clear shift in the Examiner‘s position between that articulated in
the Final Rejection (from which the appeal was taken) to that articulated in
the Examiner‘s Answer.
Simply put, the Examiner changed the grounds of rejection for at least
claims 4, 7, and 8 in the Answer. Although claims 4, 7, and 8 depend
directly or indirectly from claim 1 (which was rejected over Shaughnessy
and Nwabueze), the Examiner unambiguously excludes Shaughnessy from
the rejection of claims 4, 7, and 8. That the Examiner relies on Shaughnessy
to cure the perceived deficiencies of claims 5 and 6 (Fin. Rej. 14-16)—

4
Accord Fin. Rej. 11-12 (rejecting claim 2 over these references).
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claims that depend from claim 4—is telling: Had the Examiner intended to
reject claim 4 (and claims 7 and 8 which depend therefrom) over
Shaughnessy (in addition to Power and Nwabueze), the Examiner would
surely not need to further cite Shaughnessy as a tertiary reference in
rejecting dependent claims 5 and 6. That the Examiner rejects claim 2—a
claim that, like claim 4, directly depends from claim 1—over Shaughnessy,
Nwabueze, and Power (Fin. Rej. 11-12) only bolsters our conclusion that the
Examiner did not intend to reject claim 4 over Shaughnessy in the Final
Rejection.
Despite the Examiner‘s insistence that claims 4, 7, and 8 are rejected
under Shaughnessy, Nwabueze, and Power in the Examiner’s Answer (Ans.
26), they were not so rejected in the Final Rejection. Such shifts run counter
to notions of fundamental fairness in appellate proceedings, for the appeal
was taken based on the Examiner's position articulated in the Final
Rejection—not the Examiner‘s Answer. To the extent that the Examiner
decided to abandon the position in the rejection in favor of another position
on appeal, such a shift must be designated as a new ground of rejection to
give Appellants a fair opportunity to respond to the new position—a
procedural requirement not followed here. See MPEP 1207.03; see also In
re Kronig, 539 F.2d 1300, 1302-03 (CCPA 1976).
Although Appellants did not petition this procedural inconsistency,
and did not file a Reply Brief, we are nonetheless presented with two
inconsistent positions on this record. We therefore decline to reach the
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merits of the newer position since it is inconsistent with that taken in the
rejection from which the appeal was taken.
5

Since the Examiner unambiguously omits Shaughnessy from the
rejection of claims 4, 7, and 8 from which the appeal was taken, we are
persuaded that the Examiner erred in rejecting these claims for the reasons
indicated by Appellants. Br. 8-9.

THE OBVIOUSNESS REJECTION OF CLAIMS 5 AND 6
We reach the opposite conclusion, however, regarding the Examiner‘s
rejection of claims 5 and 6. Not only did Appellants not separately argue
these claims, they were also rejected collectively over Shaughnessy,
Nwabueze, and Power—albeit in a different order. Compare Fin. Rej. 14
with Ans. 15. Accordingly, we are not persuaded that the Examiner erred in
rejecting claims 5 and 6 over these references‘ collective teachings.

CONCLUSION
The Examiner did not err in rejecting (1) claim 1 under the doctrine of
obviousness-type double patenting, and (2) claims 1-3, 5, and 6 under § 103.
The Examiner, however, erred in rejecting claims 4, 7, and 8 under § 103.

ORDER
The Examiner‘s decision rejecting claims 1-8 is affirmed-in-part.

5
The Board reviews the Examiner's final rejection in appeals under 35
U.S.C. § 134(a). See In re Webb, 916 F.2d 1553, 1556 (Fed. Cir. 1990).
Accord Ex parte Palomar, No. 2009-011698, 2011 WL 3666727 (BPAI
2011) (non-precedential), at *3; Ex parte Shaw, No. 2009-013330, 2012 WL
1071560 (BPAI 2012) (non-precedential), at *3.
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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-IN-PART

kis