MACHINES CORPORATION, INTERNATIONAL BUSINESS

Patent Trials and Appeals Board

May 10, 2021

2019006689 (P.T.A.B. May. 10, 2021)

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.
13/800,139 03/13/2013 Serge Bourbonnais YOR920130197US1
(163-658)
9163
49267 7590 05/10/2021
Tutunjian & Bitetto, P.C.
401 Broadhollow Road
Suite 402
Melville, NY 11747
EXAMINER
THAI, HANH B
ART UNIT PAPER NUMBER
2163
NOTIFICATION DATE DELIVERY MODE
05/10/2021 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):
docketing@tb-iplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SERGE BOURBONNAIS, YOU-CHIN FUH, YI JIN, XIAO LI,
HONG MIN, and MIAO ZHENG
____________

Appeal 2019-006689
Application 13/800,139
Technology Center 2100
____________

Before CAROLYN D. THOMAS, MICHAEL J. STRAUSS, and
DAVID J. CUTITTA II, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–8 and 20. Claims 9–19 and 21 are
canceled. See Claims App. We have jurisdiction over the appeal under 35
U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as
International Business Machines Corporation. Appeal Br. 4.
Appeal 2019-006689
Application 13/800,139

2
The present invention relates generally to partitioning a database into
consistency groups for replication. See Spec., ¶ 1.
Claim 1 is illustrative:
1. A method for replication group partitioning, comprising:
analyzing historical workload data for a plurality of data
elements with a processor to identify and categorize one or more
transaction patterns, each transaction pattern corresponding to a
particular group of transactions that updates the same data elements
and having a corresponding peak throughput;
generating a recommended partitioning of the plurality of
data elements into one or more replication groups, based on the peak
throughputs of the one or more transaction patterns, that are optimized
toward a partitioning goal; and
logging transactions that involve the plurality of data
elements in a first data center; and
replicating the logged transactions in a second data
center, where the replicated transactions are grouped according to the
recommended partitioning.

Appellant appeals the following rejections:
R1. Claims 1–6 and 20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Jackson (US 2002/0152305 A1, Oct.
17, 2002), Gaur (US 2012/0311295 A1, Dec. 6, 2012), and Faith (US
2010/0280882 A1, Nov. 4, 2010). Final Act. 24–28.
R2. Claim 7 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Jackson, Gaur, Faith, and Calder (US
2012/0303791 A1, Nov. 29, 2012). Final Act. 28–29.
R3. Claim 8 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Jackson, Gaur, Faith, and Langen (US
2008/0155310 A1, June 26, 2008). Final Act. 29–30.
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
Appeal 2019-006689
Application 13/800,139

3
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

RELATED APPEAL
The current application is related to and has substantially the same
Specification as application 13/969,249, which is the subject of Appeal No.
2019-006695. See Appeal Br. 5. There is substantial overlap in the claims,
rejections, and corresponding arguments made by Appellant in the current
appeal and in the Related Appeal. Accordingly, where appropriate, we
incorporate herein our analysis in the Related Appeal and decide each of
these related appeals in separate decisions issued on this day.

ANALYSIS
Rejection under § 103(a)
Claims 1–8 and 20
We have reviewed Appellant’s arguments in the Briefs, the
Examiner’s rejection, and the Examiner’s response to the Appellant’s
arguments. We concur with Appellant’s conclusion that the Examiner erred
in finding that the combination of the references teach or suggest the recited
“generating a recommended partitioning of the plurality of data elements . . .
based on the peak throughputs of the one or more transaction patterns.” See
independent claims 1 and 20 (emphasis added).
As identified by Appellant, “the claims recite generating a
recommended partitioning based on peak throughputs of the transaction
patterns[] [and] [t]he Examiner has failed to show this relationship between
the peak throughputs . . . and the ultimate generation of a recommended
partitioning.” Appeal Br. 13. Appellant emphasizes that “the Examiner
Appeal 2019-006689
Application 13/800,139

4
never addresses the feature of basing such recommended partitioning on the
peak throughputs.” Id. at 14; see also Reply Br. 5.
Here, the Examiner relies upon Gaur to teach the claimed “generating
a recommended partitioning” (see Final Act. 25) and appears to rely upon
both Jackson (see id.) and Faith (see id. at 26) to teach “peak throughputs.”
However, the Examiner fails to respond to Appellant’s aforementioned
contention that there is no relationship between the prior art’s alleged “peak
throughputs” and the prior art’s ultimate generation of a recommended
partitioning. See generally Ans.
As highlighted above, independent claims 1 and 20 recite, inter alia,
“generating a recommended partitioning . . . based on the peak
throughputs.” See independent claims 1 and 20 (emphasis added). As such,
the Examiner cannot entirely ignore this limitation in claims 1 and 20 while
determining whether the subject matter of the claims would have been
obvious. In re Wilson, 484 F.2d 1382, 1385 (CCPA 1970).
Even if we assume arguendo (without deciding) that Gaur teaches
“generating a recommended partitioning” and either Jackson and/or Faith
teach “peak throughputs,” as proffered by the Examiner, we do not find, and
the Examiner has not established, that the cited combination of references
illustrate a nexus between Gaur’s generation of a recommended partitioning
and Jackson/Faith’s alleged peak throughputs. We are particularly troubled
by the chain of causation that is split between the references in the
Examiner’s proffered combination of Gaur, Jackson, and Faith.
As such, this issue turns on whether the Examiner has shown that the
cited combination of references illustrate the above indicated nexus. Here,
the Examiner has not proffered any evidence to show a linkage between
Appeal 2019-006689
Application 13/800,139

5
generating the recommended partitioning and the peak throughputs.
Significantly, in reviewing the record, we note that the Examiner’s Answer
offers no rebuttal at all to Appellant’s aforementioned argument. This
circumstance lead us to determine that because the argument under review is
unrebutted, it is therefore persuasive. It follows that we will not sustain the
rejection under 103(a).
Thus, we disagree with the Examiner’s finding that the combined
teachings of Jackson, Gaur, and Faith teach “generating a recommended
partitioning . . . based on the peak throughputs,” as recited in each of the
independent claims 1 and 20. The Examiner also has not found that any of
the other references of record teach this feature. Because we agree with at
least one of the arguments advanced by Appellant, we need not reach the
merits of Appellant’s other arguments. Accordingly, we will not sustain the
Examiner’s obviousness rejections of claims 1–8 and 20.

CONCLUSION
The Examiner’s rejections of claims 1–8 and 20 as being unpatentable
under 35 U.S.C. § 103 over at least Jackson, Gaur, and Faith is reversed.
Appeal 2019-006689
Application 13/800,139

6
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 20 103 Jackson, Gaur,
Faith
1–6, 20
7 103 Jackson, Gaur,
Faith, Calder
7
8 103 Jackson, Gaur,
Faith, Langen
8
Overall
Outcome
1–8, 20

REVERSED