Ex Parte Yamada

Patent Trial and Appeal Board

Sep 12, 2018

14329621 (P.T.A.B. Sep. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/329,621 07/11/2014 Masatoshi Yamada
73109 7590 09/14/2018
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
JP920130069US1_8134-0081 8658
EXAMINER
AL HASHEM!, SANA A
ART UNIT PAPER NUMBER
2156
NOTIFICATION DATE DELIVERY MODE
09/14/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASATOSHI YAMADA 1
Appeal2018-002500
Application 14/329,621
Technology Center 2100
Before JASON V. MORGAN, SHARON PENICK, and
DAVID J. CUTITTA II, Administrative Patent Judges.
CUTITT A, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-5 and 8-17, all pending claims of the
application. We have jurisdiction under 35 U.S.C. § 6(b). 2
We REVERSE.
1 IBM Corporation ("Appellant") is the applicant, as provided for under
3 7 C.F .R. § 1.46, and is also identified in the Brief as the real party in
interest. See Appeal Br. 1.
2 Claims 6 and 7 are cancelled. See Appeal Br. 2.
Appeal2018-002500
Application 14/329,621
STATEMENT OF THE CASE
Introduction
Appellant's invention is directed to database "access control that is
not dependent on rights of accounts." Spec. ,r 19. 3
Illustrative Claims
Claims 1, 6, 7, 8, and 13 are independent. Claims 1 and 5 are
illustrative of the claimed subject matter and are reproduced below with
limitations at issue emphasized:
1. A method comprising:
processing a database object m accordance with a
processing request;
determining a mode of processing from the processing
request; and
responsive to determining that the mode of processing
satisfies an application condition, changing content of the
processing in accordance with a rule associated with the
application condition using a processor.
5. The method of claim 1, wherein, if the mode of the
processing based on the processing request satisfies a
predetermined application condition, the changing content of the
processing comprises deleting data minus a predetermined
amount from the data obtained as a result of the processing
3 Throughout this Decision, we refer to: (1) Appellant's Specification filed
July 11, 2014 ("Spec."); (2) the Final Office Action ("Final Act.") mailed
March 23, 2017; (3) the Appeal Brief filed August 8, 2017 ("Appeal Br.");
(4) the Examiner's Answer ("Ans.") mailed November 3, 2017; and the
Reply Brief filed January 2, 2018 ("Reply Br.").
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Appeal2018-002500
Application 14/329,621
thereby to output the predetermined amount of data, m
accordance with the rule.
Appeal Br. 18-19.
REFERENCE AND REJECTIONS
Claims 5, 12, and 17 stand rejected under 35 U.S.C. § 112(a) as
failing to comply with the enablement requirement. Final Act. 2-3.
Claims 1-5 and 8-17 stand rejected under 35 U.S.C. § I02(a)(l) as
anticipated by Kudoh et al. (US 2002/0077803 Al; June 20, 2002)
("Kudoh"). Final Act. 3-5.
Our review in this appeal is limited only to the above rejections and
the issues raised by Appellant.
ANALYSIS
35 USC§ l 12(a) Rejection
The Examiner finds claim 5 "fail[ s] to comply with the enablement
requirement" because "[t]he specification of the instant application fail to
provide proper support to" the limitation at issue. Final Act. 2.
Appellant argues "the Examiner has not explained why paragraphs
[0024] and [0082] of Appellant's specification as well as Rule 7 illustrated
in Figure 7 [ fail to] enable the claimed invention." Appeal Br. 9. Appellant
further argues "Appellants have been unable to identify where the Examiner
responded to these arguments." Reply Br. 2.
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Appeal2018-002500
Application 14/329,621
We find Appellant's arguments persuasive. The Examiner merely
states "the instant application fail[ s] to provide proper support" to the claim,
without providing further analysis. Final Act. 2. The Examiner conflates
§ 112(a) enablement analysis with§ 112(a) written description analysis.
More importantly, the Examiner fails to articulate, with sufficient findings or
explanation, either a§ 112(a) enablement rejection or a§ 112(a) written
description rejection. See id. at 2, 5. Consequently, we are constrained by
the record before us to find that the Examiner erred in rejecting claim 5
under 35 U.S.C. § 112(a) and we reverse the Examiner's§ 112(a) rejection
of 5 and of claims 12 and 17, which are similarly rejected.
35 USC§ 102 Rejection
The Examiner finds Kudoh discloses "responsive to determining that
the mode of processing satisfies an application condition, changing content
of the processing in accordance with a rule associated with the application
condition using a processor," as recited in claim 1. Final Act. 2 ( citing
Kudoh ,r,r 85, 87, 92). Specifically, the Examiner relies on Kudoh's
"method of identifying name tag and access is enabled" to disclose the
claimed "changing content of the processing." Final Act. 2-3 ( citing Kudoh
i187).
Appellant argues the Examiner errs in finding Kudoh discloses the
limitations at issue because:
As discussed in Appellant's specification "if the content of
processing based on a processing request satisfies an
application condition for an access rule according to the present
embodiment, the content of the processing is converted in
accordance with an execution rule. Therefore, a processing
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Appeal2018-002500
Application 14/329,621
result is different than would be obtained in the case where the
access rule is not applied'' ( emphasis added). Based upon this
interpretation, the permitting access does not change the
processing result. Again, for purposes of clarifying the record,
Appellant respectfully requested that the Examiner explicitly
identify what feature within Kudoh corresponds to the claimed
"processing."
Appeal Br. 13 (citing Final Act. 3--4). Appellant further argues that Kudoh's
"'method of identifying name tag and access"' does not teach or suggest
changing content of the processing, as claimed, because "the limitations at
issue refer to 'changing content of the processing' -not just changing
content" and because "'identifying' [tags] is not 'changing."' Appeal
Br. 13.
The Examiner responds
Examiner disagrees. Once again the specification of the instant
application didn't define the "application condition" in any
specific way, thus the term(s) was given the broadest reasonable
interpretation in the light of the specification. The applied art
discloses in Para. 93 the access condition tag represents a
condition for applying the access control tagged objects which
corresponds to application condition.
Ans. 3--4 (citing Kudoh ,r 93).
Appellant further argues that in the Answer "the Examiner has not
addressed Appellant's arguments in the Appeal Brief that 'the permitting
access does not change the processing result"' and "'the Examiner has still
failed to adequately explain how Kudoh teaches that the content of the
processing is changed in accordance with a rule associated with the
application condition"' because the Examiner's response "does not address
these arguments." Reply Br. 6.
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Appeal2018-002500
Application 14/329,621
We are persuaded by Appellant's arguments. Although we agree with
the Examiner that Kudoh's use of a tag to determine "whether the accessing
of the object should be permitted" (see Kudoh ,r 85) discloses "determining
that the mode of processing satisfies an application condition," the Examiner
does not show how Kudoh discloses changing content of the processing in
accordance with the access controller's access determination. As noted by
Appellant, the Examiner does not respond to Appellant's arguments.
Accordingly, we agree with Appellant that the Examiner has not
shown how Kudoh' s discussion of a "method of identifying [a] name tag and
access is enabled" (Final Act. 2) discloses "changing content of the
processing in accordance with a rule associated with the application
condition," responsive to determining that the mode of processing satisfies
an application condition, as recited in illustrative claim 1.
Thus, we are persuaded that the Examiner has not shown Kudoh
anticipates claim 1. See Richardson v. Suzuki Motor Co., Ltd., 868 F .2d
1226, 1236 (Fed. Cir. 1989) ("[A]n invention is anticipated if the same
device, including all the claim limitations, is shown in a single prior art
reference. Every element of the claimed invention must be literally present,
arranged as in the claim." (citations omitted)).
Because we agree with at least one of the dispositive arguments
advanced by Appellant for claim 1, we need not reach the merits of
Appellant's other arguments. Accordingly, based on the record before us,
we do not sustain the Examiner's 35 U.S.C. § 102 rejection of independent
claim 1, and of independent claims 8 and 13, which recite limitations
commensurate to those discussed above, and, for the same reasons,
dependent claims 2-5, 9-12, and 14--17.
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Application 14/329,621
DECISION
We reverse the Examiner's decision to reject claims 5, 12, and 17
under 35 U.S.C. § 112(a).
We reverse the Examiner's decision to reject claims 1-5 and 8-17
under 35 U.S.C. § 102(a)(l).
REVERSED
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