Ex Parte Bangel et alDownload PDFPatent Trial and Appeal BoardFeb 19, 201310140466 (P.T.A.B. Feb. 19, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MATTHEW JAY BANGEL, JAMES A. MARTIN, JR., and DOUGLAS G. MURRAY ____________ Appeal 2011-007841 Application 10/140,466 Technology Center 2100 ____________ Before JOHN A. JEFFERY, ELENI MANTIS MERCADER, and GLENN J. PERRY, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL This application returns to us after another panel of this Board affirmed the Examiner’s rejection of then-pending claims 1-26. See Ex parte Bangel, No. 2007-2263 (BPAI Feb. 19, 2008) (“Bd. Dec.”).1,2 Prosecution was reopened after that decision, and Appellants now appeal under 35 U.S.C. § 134(a) from the Examiner’s subsequent rejection of claims 1-26. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 The earlier panel was Judges Thomas, Gross, and Jeffery. 2 Although Appellants indicate that there are no related appeals (App. Br. 1, 14), the Examiner correctly identifies the earlier Board decision in connection with this application. Ans. 30-35. Appeal 2011-007841 Application 10/140,466 2 STATEMENT OF THE CASE Appellants’ invention automatically transmits change history data corresponding to a database design change to a “production” database. See generally Spec. 1-4. Claim 1 is illustrative: 1. A method for maintaining a change history for a database design, comprising: providing a production database having a design; formulating a change to the design; entering change history data corresponding to the change into a change history database; implementing the change; and automatically, when the change is implemented, sending an entirety of the change history data from the change history database to the production database for entry into the production database. THE REJECTIONS 1. The Examiner rejected claims 1-26 under 35 U.S.C. § 103(a) as unpatentable over Carley (US 6,701,345 B1; issued Mar. 2, 2004; filed Apr. 13, 2000), Epstein (US 2002/0049738 A1; published Apr. 25, 2002), and Bodnar (US 6,295,541 B1; issued Sept. 25, 2001). Ans. 5-15.3 2. The Examiner rejected claims 1-26 under 35 U.S.C. § 103(a) as unpatentable over Carley, Epstein, and Kopcha (US 2002/0133250 A1; published Sept. 19, 2002; filed Mar. 14, 2001). Ans. 16-25. 3 Throughout this opinion, we refer to (1) the Appeal Brief filed September 2, 2010 (“App. Br.”); (2) the Examiner’s Answer mailed November 26, 2010 (“Ans.”); and (3) the Reply Brief filed January 26, 2011 (“Reply Br.”). Appeal 2011-007841 Application 10/140,466 3 THE OBVIOUSNESS REJECTION OVER CARLEY, EPSTEIN, AND BODNAR The Examiner finds that Carley discloses every recited feature of representative claim 1 except for (1) formulating a change to a production database design, and (2) automatically, when the change is implemented, sending an entirety of corresponding change history data from a change history database to the production database for entry into the production database. Ans. 5, 25-26. The Examiner, however, cites Epstein and Bodnar for teaching these features in concluding that the claim would have been obvious. Ans. 5-8, 25-30. Appellants argue that since Epstein’s automated version history refers to changes in metabase data—not its structure—this version history does not correspond to the recited change history data as the Examiner contends. App. Br. 5. Appellants add Bodnar is similarly deficient since not only is there no change history data, let alone a separate change history database, but changed data is merely replicated to sites remote from the original change which is said to be opposite from the claimed invention. App. Br. 5- 6; Reply Br. 3-4. Lastly, Appellants contend that there is no reason to combine the references as proposed in view of their disparate teachings and fields of art. App. Br. 6-7. ISSUE I. Under § 103, has the Examiner erred in rejecting claim 1 by finding that Carley, Epstein, and Bodnar collectively would have taught or suggested automatically, when a change to a production database design is implemented, sending an entirety of change history data from a change Appeal 2011-007841 Application 10/140,466 4 history database to a production database for entry into the production database? II. Is the Examiner’s combining the teachings of these references supported by articulated reasoning with some rational underpinning to justify the Examiner’s obviousness conclusion? ANALYSIS We begin by noting that claim 1 of the present appeal differs from that of the earlier appeal before this Board in that it includes various narrowing limitations to the last clause, namely “automatically, when the change is implemented, sending an entirety of the change history data from the change history database to the production database for entry into the production database” (emphasis added to indicate additions). The Examiner cites Epstein and Bodnar for teaching these limitations, and concludes that claim 1 would have been obvious when these teachings are combined with Carley. Ans. 4-8, 25-30. We see no error in this conclusion. First, Epstein’s metadata-enhanced database (metabase) attributes include an automated version history, which is a revision history that is kept automatically to allow users to view and compare differences between any two revisions of a given record. Epstein Abstract, ¶¶ 0038, 0056. Epstein’s metabase also has a modification attribute that enables modifying the database’s structure by, for example, creating database tables and fields within tables. Epstein ¶ 0038. Specifically, when a record or the database structure itself is modified, interested users are notified by email which provides (1) a link to the revision, and (2) an accounting of the revisions made and by whom. Epstein ¶ 0060. Users can also be notified of Appeal 2011-007841 Application 10/140,466 5 modifications to the field structure (new and edited fields, deleted files, etc.) to not only inform them of these structural changes, but also to provide additional data comporting with these changes. Epstein ¶¶ 0060, 0092. The clear import of this discussion is that “change history data” (e.g., an accounting of the revisions to the database structure itself) is automatically sent from a database to users responsive to implementing database design changes. Although Epstein does not explicitly state that this change history data is sent in its entirety, Epstein nonetheless at least suggests as much, particularly in light of the distinction between the two key data elements sent to the user responsive to structural changes: (1) a link to the revision (singular), and (2) an accounting of the revisions made (plural) and who made them. See Epstein ¶ 0060. That these revisions are automatically kept in a revision history (i.e., an automated version history) as noted above only bolsters our conclusion that Epstein’s accounted-for revisions represent a comprehensive revision history. This revision accounting also reasonably comports with Appellants’ description of “change history data” in the Specification, namely that it “comprises details regarding the design change (e.g., what change was made, when the change was made, what database was changed, etc.).” Spec. 8:3-5 (emphasis added). We emphasize the exemplary and open-ended language of this description, for it only underscores that the recited “change history data” is hardly limited to these examples. In any event, Epstein’s accounting of database structural revisions sent to users noted above amply comports with this description. Nor are we persuaded of error in the Examiner’s reliance on Bodnar merely to show that it is known to automatically send data from one Appeal 2011-007841 Application 10/140,466 6 database to another for entry responsive to an implemented change. Ans. 6- 8, 26-27 (citing Bodnar col. 24, ll. 1-25; Fig. 7C). As shown in Bodnar’s Figure 7C, when the user changes the value of record R3 from “3” to “3B” at Time 1 in row 726, that changed value is provided to client A’s corresponding record R3 just after Time 3 in row 730 to synchronize the clients. Bodnar col. 14, ll. 7-21. Notably, the Examiner indicates that client A’s records represent a “production database,” and client B’s records represent a “change history database” (Ans. 27, 30)—findings that are undisputed. Although Appellants contend that Bodnar moves data away from the site of the change in a manner opposite to the claimed invention (Reply Br. 6), Appellants do not persuasively rebut the Examiner’s position based on the fundamental concept of moving data responsive to a change from a “change history database” to a “production database” under the Examiner’s mapping. Although the particulars of this data may not reflect an entire change history as Appellants seem to suggest (App. Br. 5-6; Reply Br. 3), the Examiner’s rejection is not based solely on Bodnar, but rather over the collective teachings of Carley, Epstein, and Bodnar. As noted above, Epstein teaches sending an entirety of change history data from a database to the user, and Bodnar teaches entering updated data in a production database responsive to the update. Given these collective teachings, and further noting that the earlier Board panel held that automatically propagating changes from one database to another is well known as evidenced by Carley Appeal 2011-007841 Application 10/140,466 7 and Epstein (Bd. Dec. 6-7),4 we are unpersuaded of error in the Examiner’s obviousness conclusion over the cited prior art’s collective teachings. To the extent that Appellants argue that the change history data noted above is not entered into the production database (see Reply Br. 6), such an argument is not commensurate with the scope of claim 1 which does not recite an affirmative data entry step, but rather sending an entirety of the change history data from the change history database to the production database for entry into the production database. We emphasize “for” here, for this functional recitation merely recites an intended use of the data sending step—an entry which may or may not occur. Lastly, we find no error in the Examiner’s rationale to combine the references. Ans. 8, 27-28. First, to the extent that Appellants’ combinability argument is based on Carley and Epstein as being in disparate fields of art (see App. Br. 6-7), the earlier Board panel held that these references are in the same field of endeavor, namely database management and transferring data between databases. Bd. Dec. 7. In any event, Appellants’ argument regarding whether Epstein’s metabase structural modifications are compatible with a data replication environment (App. Br. 7) is unavailing, for Epstein transfers data about these modifications to users, and Bodnar teaches transferring updated data to another database for entry as noted above. In short, the Examiner’s combination of references predictably uses prior art elements according to their established functions—an obvious improvement. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). 4 Although the earlier Board panel affirmed the Examiner’s obviousness rejection over Carley, Epstein, and Kopcha, the panel’s findings and conclusions regarding Carley and Epstein are nonetheless applicable here. Appeal 2011-007841 Application 10/140,466 8 We are therefore not persuaded that the Examiner erred in rejecting representative claim 1, and claims 2-26 not separately argued with particularity. THE OBVIOUSNESS REJECTION OVER CARLEY, EPSTEIN, AND KOPCHA Since Appellants do not contest the Examiner’s rejection of claims 1- 26 over Carley, Epstein, and Kopcha (Ans. 16-25) in the Appeal Brief (see App. Br. 4-7; Ans. 3-4 (noting this omission)), we summarily sustain this rejection. See MPEP § 1205.02 (“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.”). According to Appellants, arguments pertaining to this rejection were included in the Appeal Brief filed May 26, 2009 and were inadvertently omitted from the most recent Appeal Brief filed September 2, 2010. Reply Br. 4. Appellants then add arguments to the Reply Brief pertaining to this rejection in an attempt to cure this defect. Reply Br. 4-6. But the Appeal Brief filed May 26, 2009 was the first of three briefs filed in connection with three successive appeals after the earlier Board decision. The first appeal was taken from the Examiner’s Final Rejection mailed January 21, 2009 based on rejections over (1) Carley, Epstein, and Kopcha, and (2) Carley, Epstein, and Robertson. See App. Br. filed May 26, 2009. Following this brief, the Examiner reopened prosecution by entering new grounds of rejection over Carley, Epstein, and Midgley. Final Rej. mailed Sept. 3, 2009. Appellants then appealed this rejection. See App. Br. Filed December 30, 2009. After this brief, the Examiner again reopened prosecution by entering additional new grounds of rejection based on (1) Appeal 2011-007841 Application 10/140,466 9 Carley, Epstein, and Bodnar, and (2) Carley, Epstein, and Kopcha. Fin. Rej. mailed Apr. 7, 2010. Notably, it is this Final Rejection from which the present appeal is taken. Despite this somewhat complicated and piecemeal prosecution history, once the Examiner entered new grounds of rejection and reopened prosecution following an appeal brief, that action effectively ended that appeal for all practical purposes. Reinstating an appeal under these circumstances requires filing a new notice of appeal followed by an appeal brief—as was twice done here. See MPEP § 1207.04. Accord MPEP § 1204.01. Although the Examiner reinstated the previously-abandoned rejection based on Carley, Epstein, and Kopcha in the most recent Final Rejection, and Appellants previously presented arguments pertaining to that rejection in an earlier appeal, it is incumbent on Appellants to present arguments pertaining to every ground of rejection for review in this appeal particularly where, as here, there are different appeals based on different grounds of rejection and different prior art. See MPEP 1205.02: It is essential that the Board be provided with a brief fully stating the position of the appellant with respect to each ground of rejection presented for review in the appeal so that no search of the record is required in order to determine that position. Thus, the brief should not incorporate or reference previous responses. By not including arguments from an earlier appeal in the present appeal brief, Appellants waived those arguments in this appeal despite their belated presentation for the first time in this appeal in the Reply Brief. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[T]he reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner’s Appeal 2011-007841 Application 10/140,466 10 rejections, but were not.”). Accordingly, we will not consider these belated arguments. We therefore summarily sustain the Examiner’s rejection of claims 1- 26 over Carley, Epstein, and Kopcha. CONCLUSION The Examiner did not err in rejecting claims 1-26 under § 103. ORDER The Examiner’s decision rejecting claims 1-26 is affirmed. 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 rwk Copy with citationCopy as parenthetical citation