Ex Parte Yang

Board of Patent Appeals and Interferences

Jan 14, 2010

09677493 (B.P.A.I. Jan. 14, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GUANG YANG
____________

Appeal 2009-001164
Application 09/677,493
Technology Center 2100
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Decided: January 15, 2010
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Before LANCE LEONARD BARRY, JOHN A. JEFFERY, and
THU A. DANG, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant, pursuant to 37 C.F.R. § 41.52, has submitted a timely
Request for Rehearing dated August 31, 2009 (“Request”), requesting
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rehearing of our original decision dated September 14, 2009.1 The
Examiner rejected: (1) claims 1 and 6 under 35 U.S.C. § 103(a) as
unpatentable over Gill, Bowman-Amuah, and Allport; (2) claims 2-4 under
35 U.S.C. § 103(a) as unpatentable over Gill, Bowman-Amuah, Allport, and
Koppolu; (3) claim 5 under 35 U.S.C. § 103(a) as unpatentable over Gill,
Bowman-Amuah, Allport, Koppolu, and Moursund; (4) claim 7 under 35
U.S.C. § 103(a) as being unpatentable over Gill, Bowman-Amuah, Allport,
and Teper. In that opinion, we affirmed the rejections of claims 1 and 3, but
reversed the rejections of claims 2 and 4-7. Opinion 21.
We have reconsidered our September 14, 2009 Opinion in light of
Appellant’s comments in the Request, and we find no errors therein. We
therefore decline to change our prior decision for the following reasons.
Appellant has included new evidence related to Microsoft® Publisher
and Word with the Request. See Request, App’x A and B. Evidence not
previously relied upon in the Briefs, however, is not permitted in the
Request, except when: (1) Appellant shows, based on a recent relevant
decision by the Board or a Federal Court, good cause for introducing the
evidence, or (2) a new ground of rejection was made in the Opinion pursuant
to § 41.50(b). See 37 C.F.R. § 31.52(a); see also Manual of Patent
Examining Procedure, 8th ed., Rev. 3 (MPEP) § 1214.03. Neither exception
applies. Moreover, 37 C.F.R. § 41.77(b)(1) cited by the Appellant (Request
2) is inapplicable because our decision does not involve reversing an
Examiner’s decision not to make a rejection proposed by a requester in an

1 Although Appellant styles the Request as a request to reopen prosecution,
we nonetheless consider the Request as a request to rehear our earlier
decision.
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inter partes reexamination proceeding.2 The present appeal is an ex parte
appeal. We will therefore not consider the new evidence and arguments
regarding the evidence in the Request.
Additionally, throughout the Request, Appellant makes several
statements that claims 1-7 are patentable under 35 U.S.C. § 101. Request 2,
4, 13, and 15-17. Claims 1-7, however, were rejected under § 103—not
§ 101. We will therefore not address any arguments related to § 101 and
claims 1 and 3.
Appellant separately argues claim 1 from claim 3. We therefore
address each claim separately.

Claim 1
Appellant discusses Gill, Bowman-Amuah, and Allport individually
and contends some of the claim limitations are lacking in each reference.
Request 5-6. We reiterate that one cannot show nonobviousness by
attacking references individually where the rejections are based on
combinations of references. In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986). Since the obviousness rejections of claims 1 and 3 are
based on at least the combination of Gill, Bowman-Amuah, and Allport, any
arguments that Gill or Bowman-Amuah alone fail to disclose or teach a
relational database (Request 5), or that Allport alone fails to teach an
integrated database data editing system (Request 6) are not persuasive. See
id.

2 A reexamination proceeding occurs only after a patent application has
issued into a patent. See 35 U.S.C. § 302.
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Appellant asserts the Board erred in several factual findings and legal
conclusions regarding Gill, Bowman-Amuah, and Allport. Request 6-7. For
example, without any argument or evidence, Appellant alleges that Gill,
Bowman-Amuah, and Allport do not teach or suggest individually nor
collectively anything related to an integrated relational database data editing
system that includes a client computer accessing, editing, and modifying
database data from a remote server computer database. Request 7.
However, mere arguments and conclusory statements that are unsupported
by factual evidence are entitled to little probative value. In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699,
705 (Fed. Cir. 1984).
Appellant also contends that both (a) Gill and Bowman-Amuah and
(b) Gill and Allport are unrelated. Request 6 and 11. As stated in our
Opinion (Opinion 9), “[t]he analogous-art test requires that the Board show
that a reference is either in the field of the applicant's endeavor or is
reasonably pertinent to the problem with which the inventor was concerned
in order to rely on that reference as a basis for rejection.” In re Kahn, 441
F.3d 977, 986-87 (Fed. Cir. 2006) (citing Oetiker, 977 F.2d at 1447).
Further, we stated that while Allport is not in the same field of endeavor as
Appellant’s invention, Allport is nevertheless reasonably pertinent to the
problem with which the Appellant was concerned (i.e., organizing data in a
database in an efficient and consumer-friendly manner) and is therefore
analogous art. See id. at 10; FF 6 and 10.
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Regarding Appellant’s argument that Gill and Bowman-Amuah are
unrelated, we note that this argument is untimely.3 We also see no reason
why it could not have been presented earlier in the Appeal Brief.
Regardless, Gill is in the same field of endeavor as Appellant’s invention,
and is a database data editing system with controlled access to information
through an authentication process (FF 1, 3 and 4). Likewise, Bowman-
Amuah is reasonably pertinent to the problem Appellant was concerned (i.e.,
controlling user access to information). See FF 7. We therefore disagree
with Appellant that Gill, Bowman-Amuah, and Allport are unrelated or non-
analogous art.
Appellant further argues that our first finding of fact (FF 1) is
erroneous. Request 7-8. Appellant asserts that the disclosed “data base” in
Gill is not a relational database, and that the term “data base” is allegedly not
a known term of art. Request 8. Notably, Appellant appears to distinguish
the term “data base” (i.e., with a space between “data” and “base”) as
somehow being substantively different from the term “database” (i.e.,
having no space). See id.
We fail to see this distinction as meaningful, and Appellant has not
provided any evidence that an ordinarily skilled artisan would understand
the phrase “data base” as meaning anything different than “database.”
Moreover, we do not agree that the term “database” “is a computer scientific
term referring to [a] relational database.” Request 8 and 11. First, Appellant
provides no supporting evidence of this position. Second, while a relational

3 See Optivus Tech., Inc. v. Ion Beam Appl’ns. S.A., 469 F.3d 978, 989 (Fed.
Cir. 2006) (“[A]n issue not raised by an appellant in its opening brief … is
waived.”) (citations and quotation marks omitted).

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database is a type of database, not all databases are relational databases.
Otherwise, the adjective “relational” preceding “database” would be
rendered meaningless or superfluous.
Appellant also asserts that we allegedly “erred and misapprehended”
all the findings of facts, including FF 2-10. See Request 7-10. Nonetheless,
Appellant fails to point out the purported errors in our findings. Regarding
FF 2-3, Appellant states that Gill does not disclose that the files are
transferred from, or data is stored in, a relational database. Request 8.
These findings of fact, however, do not state that Gill discloses a relational
database. See FF 2-3. In fact, we admitted that Gill fails to disclose a
relational database. Opinion 10.
As for FF 4, Appellant does not even discuss Gill, but instead
discusses the functions of the new evidence that will not be considered.
Request 8. As for FF 5, Appellant argues that Gill does not state what the
S4 is and how it is connected to the networks. Request 9. However, other
than stating S4 is a data communication connection, FF 5 does not allege
what S4 is or how it is connected to the network. See FF 5. Regarding FF 6,
Appellant summarizes what Allport teaches in the finding and has not
specifically pointed out an error. Request 9. As for FF 7 and 8, Appellant
argues that Bowman-Amuah did not invent access control techniques or
TCP. Request 9. These findings of fact do not assert Bowman-Amuah
invented access control techniques or TCP. Lastly, Appellant makes no
arguments for FF 9-10. Request 9-10.
Appellant next asserts that Gill, Bowman-Amuah, and Allport are not
physically combinable, and that an ordinarily skilled artisan would not
combine their teachings into a functional system. Request 11-13.
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Specifically, Appellant contends that the Gill and Allport are not related to
an integrated data editing system. Request 11. As stated in the Opinion,
however, Gill discloses an editing database system that permits a client
computer to edit and modify the database data. See Opinion 10-11; see also
FF 2-4. Moreover, Appellant admits Gill uses “commercial, text, picture,
movie and sound editors” (Request 5), and that a staff member using the
client computer can “access, modify, and update data on the server”
(Request 12). Thus, Gill discloses a data editing system that permits a client
computer to edit and modify data.
Appellant, however, repeats his position that Gill does not teach a
relational database editing system. Request 11-12. We disagree to the
extent that Gill discloses a database editing system. As stated above,
including a space between “data” and “bases” in column 2, line 46 of Gill
does not imply that Gill fails to disclose a database that includes a collection
of multimedia object data and information related to the object data. See FF
1. We therefore find that Gill is related to an editing database system that
permits the editing of database data.
Although Gill does not disclose a relational database data editing
system of claim 1, Allport nevertheless cures this deficiency. See Opinion
10. Appellant contends that Allport is not analogous art, and that Kahn does
not apply. Request 11. While Allport does not discuss a data editing system
having all the features of claim 1, we nonetheless maintain that Allport is
analogous art. See Opinion 10. Allport relates to database system that has
the ability to organize and edit data in a user-friendly manner using a
relational database (FF 6) and, therefore, is reasonably pertinent to the
problem with which the Appellant is concerned—permitting database data
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editing in an efficient and easy-to-use manner (FF 10). See also Kahn, 441
F.3d at 986-87. Moreover, combining Allport’s teaching of using a
relational database with Gill’s database will permit editing in an easy-to-use
manner and efficiently and does not render Gill inoperable for its intended
editing purposes. In fact, such a combination predictably improves Gill in
the same manner as Allport by having a database data editing system that
now edits data in a more efficient and user-friendly manner. See KSR Int’l
Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007).
Appellant also contends that the Opinion does not demonstrate that
one skilled in the art would not have recognized that multi-media objects
and data can be stored in relational databases because the technologies to
store data in files and databases are different, and that there are difficulties in
storing multi-media data in databases. Request 11. We are not persuaded.
First, as stated above, Gill discloses storing multimedia objects and
information in databases. See FF 1. Thus, Gill addresses the purported
difficulties of storing multimedia data in a database enough to be able to
store such data in a database, and teaches a known technology that involves
more than storing multimedia data in a file.
Second, Allport, as discussed above, provides an ordinarily skilled
artisan with a technique for organizing Gill’s database data in a more user-
friendly and efficient manner by using a relational database to store data.
See FF 6. Moreover, as stated in the Opinion (Opinion 10), Appellant
discusses in the Background of the Invention that it is known that relational
databases support multimedia data. See FF 9. Allport’s teaching and this
common knowledge provide ample support to conclude that an ordinarily
skilled artisan would have recognized that Gill’s multi-media objects and
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information can also be stored within a relational database. See Dystar
Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d
1356, 1361 (Fed. Cir. 2006) (citations omitted). We therefore find that Gill
and Allport are analogous art and are combinable into a functioning system
for the reasons set forth above and in the Opinion.
Appellant also argues that Gill fails to disclose a TCP/IP protocol
used to communicate between client and server computers because Gill does
not state explicitly what S4 is and how S4 is connected to the Internet.
Request 9 and 12. We agree that Gill does not disclose a TCP/IP protocol
for communication between client and server. Nonetheless, Gill does teach
data communications between client and server through a S4 Internet
connection. Additionally, the Opinion relies on Bowman-Amuah (FF 8)—
not Gill— for teaching that TCP is a known and commonly-understood
transport protocol for communication. See Opinion 11. Furthermore,
Bowman-Amuah discloses an architecture framework that is used in a client-
server relationship for transporting information over a network and the
Internet. See col. 1, ll. 25-31 and col. 1, l. 59- col. 2, l. 37. Based on
Bowman-Amuah’s teachings and the suggestion of a TCP/IP network
transport protocol for a network and Internet communications in a
client/server relationship, such as Gill’s, we disagree with Appellant
(Request 12) that an ordinarily skilled artisan would not know what network
transport protocol to use with Gill’s disclosed Internet connection between
client and server computers.
Moreover, the level of ordinary skill in the art may be evidenced by
the prior art references. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir.
1995) (“Although the Board did not make a specific finding on skill level, it
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did conclude that the level of ordinary skill in the art . . . was best
determined by appeal to the references of record . . . . We do not believe that
the Board clearly erred in adopting this approach.”); see also In re Oelrich,
579 F.2d 86, 91 (CCPA 1978). Here, Gill’s database editing system permits
editing of data over an Internet connection indicates a level of skill
commensurate with at least that of computer network engineer. See FF 1-5.
Bowman-Amuah also indicates a level of skill commensurate with computer
architecture engineer interacting with the Internet or World Wide Web. See
FF 7-8; col. 1, ll. 25-31 and col. 1, l. 59- col. 2, l. 37. This relatively high
level of skill evidenced by the references themselves tends to bolster the
Examiner’s position that skilled artisans would have combined the
references since the motivation to do so is “inextricably linked to the level of
ordinary skill.” See DyStar, 464 F.3d at 1370.
Finally, Appellant alleges that combining Gill and
Bowman-Amuah does not yield a predictable or meaningful result, and does
not teach a database editing system with a user authentication and access
control mechanism. Request 13. We disagree. Our opinion states that Gill
teaches controlling staff members’ access (FF 2), and Bowman-Amuah
teaches known technique for controlling access to group users and assigning
different access privileges. See Opinion 12. We further indicated that such
a combination of Gill and Bowman-Amuah would predictably result in
permitting certain member groups have different access privileges to data
depending on their job. Opinion 12. Such an ability to permit access
privileges to only certain groups is tantamount to the predictable use of prior
art elements according to their established functions (e.g., providing an
access control mechanism that assigns different user groups with different
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privileges)—an obvious improvement over Gill’s check-in and check-out
procedure (FF 3). See KSR, 550 U.S. at 417.
We find therefore no error in holding that Gill, Bowman-Amuah, and
Allport collectively teach the contested features recited in claim 1.

Claim 3
Appellant asserts that Koppolu does not teach anything related to an
integrated database data editing system. Request 13-14. We refer Appellant
to our previous discussion related to attacking references individually. See
also Merck, 800 F.3d at 1097. Additionally, Koppolu discloses an
application window or data manager 3201 that includes project objects
3213-3215 in a header panel, and another panel or detail panel 3205 that
provides details about a selected project object. See FF 12. Thus, while
Koppolu may not discuss that this data manager is a database data manager,
combining this teaching with Gill’s disclosure of a database editing system
(FF 1) and Allport’s teaching for using a relational database (FF 6)
predictably yields and relates to an integrated relational database data editing
system with a database data manager as recited in claim 3.
Appellant further argues that Koppolu is not combinable with Gill,
Bowman-Amuah, and Allport, and that such a combination is meaningless.
Request 15. We disagree. As explained in our Opinion, the Examiner has
reasonably articulated that an ordinarily skilled artisan would have combined
Koppolu’s teaching with the other cited references so as to provide a layout
structure that allows the user to visualize and select from information for
editing. See Opinion 17-18 (referring to Ans. 8). This rationale provides
ample reason to combine the references, and supports a legal conclusion of
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obviousness based on the cited references. See KSR, 550 U.S. at 418.
Moreover, we fail to see how combining Koppolu’s teaching with the
references renders the combined system unpredictable (Request 15). In any
event, Appellant has provided no evidence to the contrary.
Lastly, Appellant requests that prosecution be reopened. Request 16.
Although the Board lacks jurisdiction to grant such a request, we
nonetheless refer Appellant to MPEP § 1214.4 Appellant can reopen
prosecution by filing a Request for Continuing Examination (RCE) and
following the accompanying requirements under 37 C.F.R. §§ 1.114 and
1.198. See MPEP § 1214.07; see also MPEP § 1214.06(II) (addressing
treatment of dependent claims that have been reversed by a Board decision).
In conclusion, we have carefully considered the arguments raised by
Appellant in the Request, but the arguments are not persuasive to find that
the original decision was in error. Based on the record before us, we are not
persuaded that the Examiner erred in rejecting claims 1 and 3 under § 103.
Moreover, we maintain our reversal of claims 2 and 4-7 based on the record
before us.

4 See MPEP § 1214, available at
http://www.uspto.gov/web/offices/pac/mpep/mpep_e8r5_1200.pdf.
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We have granted the Request to the extent that we have reconsidered
our decision of September 14, 2009, but we deny the request with respect to
making any changes therein.

REHEARING DENIED

pgc

George Guang Yang
392 Hans Way
San Jose CA 95133