Ex Parte Yaeger

Board of Patent Appeals and Interferences

Jun 14, 2010

10402705 (B.P.A.I. Jun. 14, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte FRANK L. YAEGER
____________________

Appeal 2009-004588
Application 10/402,7051
Technology Center 2100
____________________

Decided: June 14, 2010
____________________

Before JAY P. LUCAS, STEPHEN C. SIU, and DEBRA K. STEPHENS
Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

1Application filed March 28, 2003. The real party in interest is International
Business Machines Corporation.
Appeal 2009-004588
Application 10/402,705

STATEMENT OF THE CASE
Appellant appeals from a final rejection of claims 1, 5 to 11, 14 to 16,
18 to 20, and 24 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).
Claims 2, 4, 12, 13, 17, and 21 to 23 are cancelled.

We reverse the rejection.

Appellant’s invention relates to a method of more efficiently
processing data in large data processing systems, such as those used for
billing operations. (See Spec. 2, ll. 13-15 and 19.) More specifically, the
method involves generating and using time constants in a plurality of time
formats (e.g., month/day/year or hour/minute/second) (Spec. 5, ll. 5-7). In
the words of Appellant:
[T]he … invention provide[s] time generation and
formatting and comparison methods and apparatus
that support a wide variety of formats in an
efficient manner. The present invention increases
the utility of a data processing system while
minimizing the processing burden associated with
formatting time constants.
(Spec. 6, ll. 20-23).

Claim 1 is exemplary and is reproduced below:
1. A method for generating a time constant in a
plurality of specified time formats, the method
comprising:

scanning control statements for a data
pipeline to ascertain a plurality of specified time
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formats and compile a list of the specified time
formats contained within the scanned control
statements, the specified time formats comprising
yyyymmdd, yyyy/mm/dd, yyyymm, yyyy-mm,
yyyyddd, yyyy.ddd, a decimal date, a decimal year
and month, HHMMSS, HHMM, and HH, wherein
yyyy is a year, mm is a month, dd is a day of a
month, ddd is a day of a year, HH is an hour, MM
is minutes, and SS is seconds and wherein the
control statements are record input control
statements, record filtering control statements,
record formatting control statements, and record
output control statements, and the data pipeline
processes records as directed by the control
statements;

converting a time metric to a plurality of
time sub-fields corresponding to all elements of
the plurality of specified time formats of the
compiled list, wherein the time sub-fields comprise
Extended Binary Coded Decimal Interchange
Code (EBCDIC) characters for a year, a day of a
year, a month, a day of the month, an hour,
minutes, and seconds;

concatenating selected time sub-fields to
provide a generated time constant in the plurality
of specified time formats;

storing the generated time constants in
readily accessible locations; and

comparing time constants within data
records with the generated time constant.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
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Application 10/402,705

Yaeger US 2004/0193578 A1 Sep. 30, 2004
(filed Mar. 28, 2003)

Applicant Admitted Prior Art (hereinafter “AAPA”).

IBM. “ILE RPG Reference” (February 2001),
http://publib.boulder.ibm.com./iseries/v5r1/ic2924/books/c092508317
5.htm (last visited March 5, 2008) (hereinafter “ILE RPG”).

REJECTION
The Examiner rejects the claims as follows:

Claims 1, 5 to 11, 14 to 16, 18 to 20, and 24 stand rejected under 35
U.S.C. § 103(a) for being obvious over ILE RPG in view of AAPA.

Appellant contends that ILE RPG alone, or in combination with
AAPA, does not render the claimed subject matter unpatentable for failure
of the references to teach the claim limitations “scanning control statements
for a data pipeline to … compile a list of the specified time formats
contained within the scanned control statements” (claim 1) and “converting
a time metric to a plurality of time sub-fields corresponding to all elements
of the plurality of specified time formats of the compiled list” (claim 1)
(App. Br. 22, middle to bottom). The Examiner contends that each of the
claims is properly rejected (Ans. 12, top).
We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments that 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).

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ISSUE
The issue is whether Appellant has shown that the Examiner erred in
rejecting the claims under 35 U.S.C. § 103(a). The issue specifically turns
on whether the Examiner’s rejection is properly formed.

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, apparatus, and medium for
efficiently formatting data that includes time elements (e.g., year, month,
day formatted as “yyyymmdd” or hour, minute, second formatted as
“HHMMSS”) (Spec. 5, ll. 19-21; 6, ll. 22-23). The method scans within
control statements to ascertain time formats and to compile a list of the
time formats. (See claim 1.) The method converts a time metric to a
time sub-fields that correspond to all elements of the specified time
formats of the compiled list (id.).
ILE RPG
2. The ILE RPG reference discloses scanning data arrays (p. 10-11; Ans. 4,
bottom to 5).
AAPA
3. The AAPA reference is a patent application publication of Appellant’s
own Specification (See title page). AAPA is a prior art embodiment that
discloses control statements used in a data pipeline (¶ [0039]; Ans. 5,
middle).

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PRINCIPLES OF LAW
Appellant has 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).

“A factfinder should be aware, of course, of the distortion caused by
hindsight bias and must be cautious of arguments reliant upon ex post
reasoning.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007).

“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” Id. at 418.

ANALYSIS
From our review of the administrative record, we find that the
Examiner presents the conclusions of unpatentability on pages 3 to 9 of the
Examiner’s Answer. In opposition, Appellant presents one argument that is
dispositive of the case on appeal.

Argument with respect to the rejection
of claims 1, 5 to 11, 14 to 16, 18 to 20, and 24
under 35 U.S.C. § 103(a)

The Examiner finds that ILE RPG scans data arrays that include dates
and times (FF#2). The Examiner finds that a list of time-formatted materials
is disclosed in ILE RPG at Table 52 beginning on page 41 of the reference
(Ans. 10, top). The Examiner then turns to AAPA (a prior art embodiment
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of Appellant’s own Specification at ¶¶ [0037] to [0046]), which discloses
control statements (FF#3). The Examiner then states that a person of
ordinary skill in the art would have been motivated to combine the ILE RPG
reference with AAPA’s control statements to compile a list of specified time
formats contained within the scanned control statements. (See Ans. 4,
bottom to 5, middle.) More specifically, the Examiner states that the skilled
artisan would have known to modify ILE RPG, substituting the control
statements of AAPA for ILE RPG’s data arrays (id.). The Examiner’s
statement for the proposed combination is as follows: “A skilled artisan
would have been motivated to combine as a way of processing the data
within [sic] a more orderly manner. . . . allowing the system to maximize
performance and decrease time restraints.” (Ans. 5, middle).
Appellant argues:
ILE RPG does not teach compiling a list of
specified time formats contained within the
scanned control statements. The claimed invention
was introduced into subsequent versions of the
product described by ILE RPG to add the claimed
functions of compiling the list of time formats
from scanned control statements. [Appellant]
respectfully [disagrees] that “converting the value
of the expressions” [as shown in ILE RPG and] as
argued by the Examiner is equivalent to compiling
a list of specified time formats contained within
the scanned control statements.

(App. Br. 22, middle).

Patent examination requires an examiner to place himself or herself in
the shoes of a person of ordinary skill in the art at the time the claimed
invention was made. When asserting obviousness, an examiner must state a
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rationale having a reasonable underpinning for combining references in a
proposed manner. (See KSR, 550 U.S. at 418.)
In this case, we find convincing Appellant’s argument that the
Examiner has not demonstrated Appellant’s claimed “scanning” and
“converting” steps in the proposed combination of the ILE RPG and AAPA
references for the following reasons.
The Supreme Court warns against engaging in impermissible ex post
reasoning. (See id. at 421.) Here, we decline to say that the Examiner’s
statement (Ans. 5, middle) suffices to sustain the rejection. That is, the
statement does not qualify as an “articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” (KSR, 550
U.S. at 418.) Absent further explanation or evidence why a person of
ordinary skill in the art would have been motivated to substitute AAPA’s
control statements for the data arrays of ILE RPG, we cannot say that the
rejection was properly formed. The mere conclusion asserted by the
Examiner in the Answer that data will be processed in “a more orderly
manner” (Ans. 5, middle) is an exercise of hindsight bias. We note that
Appellant’s claimed “control statements” are not just non-functional,
descriptive elements of a method claim, since exemplary claim 1 specifically
requires that the “data pipeline processes records as directed by the control
statements.” Moreover, Appellant’s claimed “list” as recited in the method
step “scanning control statements for a data pipeline to … compile a list”
relates to the claimed step of “converting a time metric …time formats of the
compiled list.” Upon reviewing the record before us, we find no indication
supporting the conclusion that the skilled artisan would have known how to
combine the cited prior art elements in the same manner as claimed, except
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for the teaching of the Appellant, which is hindsight. Accordingly, we find
error in the rejection of claim 1.
We selected independent claim 1 as representative of the claims on
appeal. Claims 5 to 11, 14 to 16, 18 to 20, and 24 stand with claim 1.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner erred in rejecting claims 1, 5 to 11, 14 to 16, 18 to 20, and 24.

REVERSED

peb

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