Ex Parte Bohannon et al

Board of Patent Appeals and Interferences

Aug 14, 2009

10342551 (B.P.A.I. Aug. 14, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PHILIP L. BOHANNON, JULIANA FREIRE SILVA,
PRASAN ROY, and JEROME SIMEON
____________________

Appeal 2008-004503
Application 10/342,551
Technology Center 2100
____________________

Decided: August 14, 2009
____________________

Before JOSEPH L. DIXON, JOHN A. JEFFERY and JAMES R. HUGHES,
Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2008-004503
Application 10/342,551

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).
We affirm.

Appellants’ Invention
Appellants invented a method for storing XML data in a database
management system (DBMS). More specifically, Appellants invented a
method for creating and evaluating multiple mappings of an XML document
and schema to a DBMS. (Spec. 1, ll. 5-7; 2, ll. 6-13.)1

Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A method of mapping extensible markup language
(XML) data for storage in an alternative database management
system (DBMS) comprising the steps of:
generating a plurality of alternative ones of said
mappings in response to a supplied XML document and
corresponding XML schema;

1 We refer to Appellants’ Specification (“Spec.”), Appeal Brief (“App.
Br.”) dated July 12, 2007, and Reply Brief (“Reply Br.”) dated December
26, 2007. We also refer to the Examiner’s Answer (“Ans.”) mailed October
25, 2007.
2
Appeal 2008-004503
Application 10/342,551

evaluating at least a prescribed attribute of each of said
plurality of mappings with respect to an expected workload for
the storage system; and
selecting one of said alternative mappings based on said
prescribed attribute which is the most advantageous for the
expected system workload.

References
The Examiner relies on the following references as evidence of
unpatentability:

Castelli US 5,978,788 Nov. 2, 1999

Daniela Florescu & Donald Kossmann, A performance Evaluation of
Alternative Mapping Schemes for Storing XML Data in a Relational
Database, (Institut National de Recherche en Informatique et en
Automatique (May, 1999), p. 1-34 (hereinafter “Florescu”).

Rejections
The Examiner rejects claims 9-19 under 35 U.S.C. § 112, second
paragraph as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellants regard as the invention.
The Examiner rejects claims 1, 9, 11, 12, and 17-19 under 35 U.S.C.
§ 102(b) as anticipated by Florescu.2

2 The Examiner rejects claims 1, 6-9, and 11-19 under 35 U.S.C. § 102(b) in
the Office Action mailed April 12, 2007, but now withdraws the rejection of
claims 6-8 and 13-16 under 35 U.S.C. § 102(b). (Ans. 3.) Claims 1, 9, 11,
12, and 17-19 stand rejected under 35 U.S.C. § 102(b). Claims 13-16 stand
rejected under 35 U.S.C. § 112, second paragraph as pointed out by
3
Appeal 2008-004503
Application 10/342,551

The Examiner rejects claims 2-5 and 10 under 35 U.S.C. § 103(a) as
unpatentable over Florescu and Castelli.

Appellants’ Contentions
Appellants contend that the Examiner improperly rejected the claims.
Specifically, with respect to the § 112, second paragraph rejection,
Appellants contend that “claim 9 clearly states” the disputed limitation (App.
Br. 6), and “the language in question clearly indicates that each of the
alternative P-Schemas are . . . translated into a storage configuration and
related statistics for the alternative DBMS. The related statistics are clearly
related to the storage configuration, and are not themselves translated.”
(Reply Br. 2-3.) Appellants also contend, with respect to the anticipation
rejection, that the invention is not anticipated by Florescu because Florescu
does not disclose “the evaluation of a prescribed attribute of each mapping
with respect to an expected workload of the storage system (App. Br. 7), or
“[the] selection is based on an attribute that is most advantageous for
expected system workload” (App. Br. 8). Appellants also contend, with
respect to the obviousness rejection, that the Examiner failed to establish a
proper prima facie case of obviousness for claims 2-5 and 10 in that the
Florescu and Castelli references do not “teach or suggest all the claim
limitations” recited in the claims, and “that no motivation exists to combine
. . . or to modify” the references. (App. Br. 11.)

Appellants. (Reply Br. 1-2.) Any error in the Examiner’s description of the
status of the claims is harmless and does not affect our disposition of the
appeal.
4
Appeal 2008-004503
Application 10/342,551

Examiner’s Findings and Conclusions
The Examiner found that the limitation “translating each of the
alternative P-Schemas into a storage configuration and related statistics for
the alternative DBMS,” as recited in Appellants’ claim 9 was unclear – “[i]t
is unclear if related statistics are translated or if they are only stored in the
DBMS.” (Ans. 4.) The Examiner found that that Florescu discloses each
feature of Appellants’ invention (as claimed in independent claims 1 and 9,
and dependent claims 11, 12, and 17-19). (Ans. 4-8.) In particular, the
Examiner found that Florescu discloses a “evaluating at least a prescribed
attribute of each . . . mapping[] with respect to an expected workload for the
storage system.” (Ans. 5, 14-16.) The Examiner also found that Florescu
and Castelli teach each feature of Appellants’ claims 2-5 and 10. (Ans. 9-
12.) The Examiner provided a rationale for the reference combinations as
required by 35 U.S.C. § 103(a), and determined that it would have been
obvious for one of skill in the art to combine the references. (Ans. 9-10, 11-
12.)

ISSUES
Based on Appellants’ contentions, as well as the findings and
conclusions of the Examiner, the issues before us are as follows.
1. Did Appellants establish the Examiner erred in determining
Appellants’ limitation of translating each of the alternative P-Schemas into a
storage configuration and related statistics for the alternative DBMS is
indefinite under 35 U.S.C. § 112, second paragraph?
5
Appeal 2008-004503
Application 10/342,551

2. Did Appellants establish the Examiner erred in determining
Florescu discloses each feature of Appellants’ invention, in particular, the
evaluation of an attribute of each mapping with respect to an expected
workload of the storage system and the selection of a mapping based on an
attribute that is most advantageous for expected system workload?
3. Did Appellants demonstrate the Examiner erred in establishing
a proper prima facie case of obviousness because Florescu and Castelli do
not teach all the features of the invention, in particular, utilizing a greedy
heuristic to select the alternative mapping and selecting the most efficient of
the alternative mappings on a cost basis, and because no motivation exists
for combining the teachings of Florescu and Castelli?

FINDINGS OF FACT (FF)
We find that the following enumerated findings are relevant to the
rejections under review and are supported by at least a preponderance of the
evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Office).

Appellants’ Invention
1. Claim 9 recites “translating each of the alternative P-Schemas
into a storage configuration and related statistics for the alternative DBMS.”
(App. Br. 15.)
2. The Appellants’ Specification explains that:
The physical Schema and the XQuery workload are then
input into the Translation unit 106, which, in this
6
Appeal 2008-004503
Application 10/342,551

example, generates the corresponding relational catalog,
i.e., list, (Schema and statistics) and SQL queries that are
input into configuration costing unit 107, i.e., a relational
optimizer, for cost estimation. In this example, for each
transformed P-Schema, Translation unit 106 generates a
set of relational tables, translates the XQuery workload
into the SQL equivalent and derives the appropriate
statistics for the selected tables.
(Spec. 12, ll. 20-27.)
3. The Appellants’ Specification does not clearly explain the
manner in which the “Translation unit 106 . . . generates the corresponding
relational catalog, i.e., . . . derives the appropriate statistics for the selected
tables. The Specification does, however, describe translating the P-Schema
(generating a new Schema and set or relational tables) distinct from
generating statistics (deriving appropriate statistics). (Spec. 12, ll. 20-27.)
4. We interpret this description to mean that the Translation unit
translates the P-Schemas and derives related statistics for the translated P-
Schemas (new Schemas and set of relational tables).
5. Each of claims 10-19 is dependent on claim 9, and recites
utilizing the statistics in some manner. For example, claims 10 and 11 recite
selecting the “most efficient” P-Schema; and claim 13 recites computing
“efficiency.”

Florescu Reference
6. Florescu describes methods for determining and evaluating
alternative mapping schemes used to store an XML document in a relational
database. One example of an alternative mapping scheme is the Attribute
7
Appeal 2008-004503
Application 10/342,551

Approach – grouping all attributes with the same name into one table.
(Florescu, pp. 10-12; Fig. 3.)
7. Florescu explains that the values (data) of the XML document
must also be stored. Florescu describes alternative methods for storing
XML data in a relational database. One example is Inlining – storing
attributes and values in the same tables. (Florescu, pp. 14-16; Fig. 7.)
8. Florescu explains that, no matter which scheme is used, the
attributes from the XML document are mapped into and stored in relational
tables. (Florescu, p. 10.)
9. Florescu describes evaluating alternative mapping schemes for
storing an XML document in a relational database. One of the evaluation
criteria that Florescu describes is evaluating the running times of a set of
queries for each different mapping scheme. Query run time is a measure of
system workload. (Florescu, pp. 6, 23, 26, 27, 30; Tables 2, 8.) Florescu
also describes prior art experiments that measured the expected query
workload to determine the best approximated schema. (Florescu, p. 6.)
10. Florescu describes, based on its evaluation process, determining
the most advantageous mapping scheme in terms of system workload.
(Florescu, pp. 6, 26, 27, 30; Table 8.) Florescu determines that the Attribute
approach for mapping attributes, and Inlining approach for storing values are
the most advantageous in terms of system workload. “Of all the alternative
ways to map attributes, the Attribute approach is the winner” and “Inlining
clearly beats separate Value tables.” (Florescu, p. 26 (italics original).)
“Our experimental results clearly show that an approach which is based on
separate Attribute tables for every attribute name that occurs in an XML
8
Appeal 2008-004503
Application 10/342,551

document and inlining of values into these Attribute tables is the best overall
approach.” (Florescu, p. 30 (italics original).)
11. Florescu describes measuring efficiency using its query run
time test. The efficiency of each alternative mapping is determined by how
quickly each of the alternative mapping performs the test queries. (Florescu,
pp. 23, 26, 27; Table 8.)
12. Florescu describes cost as another measure of the most
advantageous mapping scheme – “inlining simply wins because it saves the
cost [associated] with the Value tables.” (Florescu, p. 27.)

Castelli Reference
13. Castelli describes using “a greedy heuristic algorithm” to
determine the “best mapping” algorithm (scheme). (Col. 8, ll. 1-4.)

PRINCIPLES OF LAW
Burden on Appeal
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) (“On appeal to the Board, an applicant can overcome a rejection by
showing insufficient evidence of prima facie obviousness or by rebutting the
prima facie case with evidence of secondary indicia of nonobviousness.”)
(quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed.Cir. 1998)).

9
Appeal 2008-004503
Application 10/342,551

Indefiniteness
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted).

Anticipation
Anticipation is a question of fact. In re Schreiber, 128 F.3d 1473,
1477 (Fed. Cir. 1997). Under 35 U.S.C. § 102, “[a] claim is anticipated only
if each and every element as set forth in the claim is found, either expressly
or inherently described, in a single prior art reference.” Verdegaal Bros.,
Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987); see
Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005)
(citation omitted).

Obviousness
A claimed invention is not patentable if the subject matter of the
claimed invention would have been obvious to a person having ordinary skill
in the art. 35 U.S.C. § 103(a); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
406 (2007); Graham v. John Deere Co., 383 U.S. 1, 13 (1966).
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” and stated that “[t]he combination of familiar elements according to
10
Appeal 2008-004503
Application 10/342,551

known methods is likely to be obvious when it does no more than yield
predictable results.” KSR, 550 U.S. at 415-16. The Court explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, §103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.
Id. at 417. The operative question is thus “whether the improvement is more
than the predictable use of prior art elements according to their established
functions.” Id.
Consistent with KSR, the Federal Circuit recently recognized that
“[a]n obviousness determination is not the result of a rigid formula
disassociated from the consideration of the facts of a case. Indeed, the
common sense of those skilled in the art demonstrates why some
combinations would have been obvious where others would not.” Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007)
(citing KSR, 550 at 416). The Federal Circuit relied in part on the fact that
Leapfrog had presented no evidence that the inclusion of a reader in the
combined device was “uniquely challenging or difficult for one of ordinary
skill in the art” or “represented an unobvious step over the prior art.” Id. at
1162.

11
Appeal 2008-004503
Application 10/342,551

ANALYSIS
We address only those arguments that Appellants present in the
Briefs. Arguments that Appellants could have made but chose not to make
in the Briefs are waived. See 37 C.F.R. § 41.37(c)(1)(vii).

Rejection of the Claims under 35 U.S.C. § 112, Second Paragraph
We decide the question of whether Appellants establish that the
Examiner erred in determining Appellants’ limitation of translating each of
the alternative P-Schemas into a storage configuration and related statistics
for the alternative DBMS is indefinite under 35 U.S.C. § 112, second
paragraph. We will affirm the Examiner’s rejection of claims 9-19 for the
reasons that follow.
We find unpersuasive Appellants’ argument that the limitation
“translating each of the alternative P-Schemas into a storage configuration
and related statistics for the alternative DBMS” is clear and not indefinite.
(App. Br. 6; Reply Br. 2-3.) We note that the limitation is not clear on its
face, or in the context of the claim. We, therefore, resort to Appellants’
Specification, which explains that a Translation unit translates the P-
Schemas and derives related statistics for the translated P-Schemas.
(FF 1-4.) The Specification does not explain how the statistics are actually
derived. (FF 3.) In any case, this is not language of the recited claim
limitation.
We find one of skill in the art would not understand how the
translating step affects the statistics, i.e., how the P-Schema is translated into
related statistics. See Orthokinetics, 806 F.2d at 1576.
12
Appeal 2008-004503
Application 10/342,551

Moreover, the Examiner points out that this limitation is amenable to
multiple constructions, for example, “translating each of the alternative P-
Schemas into a storage configuration and translating related statistics for the
alternative DBMS.” (Ans. 13.) During prosecution, claims need not be
“insolubly ambiguous” to be considered indefinite under 35 U.S.C. § 112,
second paragraph. Instead, claims that are amenable to two or more
plausible claim constructions may be considered indefinite. Ex parte
Miyazaki, 89 USPQ2d 1207, 1211 (Bd. Pat. App. & Int. 2008)
(precedential).
Due to the ambiguity as to what is intended by the claimed
“translating each of the alternative P-Schemas into a storage configuration
and related statistics for the alternative DBMS” and the fact that this claim
element is amenable to two or more plausible claim constructions, we agree
with the Examiner that this limitation renders claim 9 (and dependent claims
10-19) indefinite. (FF 5.) Appellants fail to demonstrate error in the
Examiner’s indefiniteness rejection, and we will sustain the rejection of
claims 9-19.

Rejection of the Claims under 35 U.S.C. § 102(b)
We decide the question of whether Appellants established that the
Examiner erred in determining Florescu discloses each feature of
Appellants’ invention, in particular, the evaluation of an attribute of each
mapping with respect to an expected workload of the storage system and the
selection of a mapping based on an attribute that is most advantageous for
13
Appeal 2008-004503
Application 10/342,551

expected system workload. We will affirm the Examiner’s rejection of
claim 1 for the reasons that follow.
We find unpersuasive Appellants’ contentions that Florescu does not
disclose “the evaluation of a prescribed attribute of each mapping with
respect to an expected workload of the storage system (App. Br. 7), and
“[the] selection is based on an attribute that is most advantageous for
expected system workload” (App. Br. 8). Appellants make a number of
arguments related to how Florescu accomplishes evaluating and selecting the
most advantageous mapping scheme. (App. Br. 7; Reply Br. 3-4.) We note,
however, Appellants’ broad claim does not foreclose the steps described in
Florescu, and the scope of Florescu’s disclosure is commensurate with that
provided by Appellants – see App. Br. 2; Spec. 12, ll. 16-32.
We agree with the Examiner that Florescu discloses creating
alternative mapping schemes for storing an XML document in a relational
database. Florescu also discloses evaluating each of the alternative mapping
schemes based at least in part on attributes mapped from the XML
document, and on the run time of a set of queries. Query run time is a
measure of system workload. (FF 6-9.) We note that a set of predetermined
queries is a measure expected system performance or workload for the
particular mapping scheme against which the queries are run. (FF 9.)
Florescu further discloses determining, based on the evaluation process, the
best overall (most advantageous) mapping scheme in terms of system
workload; e.g., creating separate attribute tables and inlining values into
those tables. (FF 10.) Accordingly, we conclude that Florescu discloses
each of the disputed features recited in claim 1.
14
Appeal 2008-004503
Application 10/342,551

The Examiner properly explains where each feature of Appellants’
independent claim 1 is shown in the Florescu reference. Appellants fail to
demonstrate error in the Examiner’s anticipation rejection of claim 1.
Accordingly, for all the reasons noted above, we will sustain the Examiner’s
rejection of the claim.

Rejection of Claims 2-5 under 35 U.S.C. § 103(a)
We decide the question of whether Appellants demonstrate the
Examiner erred in establishing a proper prima facie case of obviousness
because Florescu and Castelli do not teach all the features of the invention,
in particular, utilizing a greedy heuristic to select the alternative mapping
and selecting the most efficient of the alternative mappings on a cost basis,
and because no motivation exists for combining the teachings of Florescu
and Castelli. We will affirm the Examiner’s rejection of claims 2-5 for the
reasons that follow.
We are not persuaded by Appellants’ argument that Florescu and
Castelli do not teach utilizing a greedy heuristic to select the alternative
mapping, or selecting the most efficient of the alternative mappings on a cost
basis. (App. Br. 11; Reply Br. 4-5.) The Examiner strictly cited Castelli as
teaching utilizing a greedy heuristic process to select and alternative
mapping. (Ans. 9, 24.) Castelli teaches utilizing a greedy heuristic
algorithm to determine the best mapping scheme. (FF 13.) Castelli shows
that it is known to use a greedy heuristic process to evaluate and optimize an
approximated version of a database (database mapping). (FF 13, Castelli –
Abstract.) Florescu teaches determining the best (most advantageous)
15
Appeal 2008-004503
Application 10/342,551

alternative mapping scheme in terms of expected system workload
efficiency (i.e., best overall query run time), as well as cost. (FF 10-12.)
We are also not persuaded by Appellants’ argument that there is no
motivation to modify Florescu to include Castelli’s greedy heuristic process.
It was well within the skill of one in the art to combine the functionality of
Castelli’s and Florescu’s database evaluation techniques as recited in
Appellants’ claims. As explained by the Examiner, it would have been
obvious to one of ordinary skill in the art at the time of invention to modify
Florescu to include Castelli’s greedy heuristic process because both Castelli
and Florescu are directed towards accessing databases and selecting
mappings, as well as creating alternative mappings. Modifying Florescu in
view of Castelli would have provided “the obvious advantage of removing
the possibility of a user error in selecting the best mapping” (Ans. 10), and
making “Florescu’s invention more effective for selecting the best mapping”
(Ans. 24). (Ans. 9-10; 23-24.)
The Examiner provides ample evidence of reasons to combine the
references. Accordingly, we find the Examiner has “articulated reasoning
with some rational underpinning” for the combination of the references.
KSR, 550 U.S. at 418. Thus, in light of KSR and Leapfrog, the evidence
provided by the Examiner supports a finding that combining familiar
elements according to known methods is obvious when it does no more than
yield predictable results. The Examiner presents a prima facie obviousness
rejection. Appellants do not provide any evidence rebutting the prima facie
case of obviousness (e.g., the invention producing unexpected results.)
16
Appeal 2008-004503
Application 10/342,551

For all the reasons noted above, Appellants fail to demonstrate error in
the Examiner’s rejection of claims 2-5. Accordingly, we will sustain the
Examiner’s rejection of these claims.

Prior Art Rejections of Claims 9-19
For the reasons expressed in this opinion, claims 9-19 are indefinite.
Therefore, the prior art rejections must fall, pro forma, because they
necessarily are based on speculative assumption as to the meaning of the
claims. See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962). It should be
understood, however, that our decision in this regard is based solely on the
indefiniteness of the claimed subject matter and does not reflect on the
adequacy of the prior art evidence applied in support of the rejections.

CONCLUSION OF LAW
On the record before us, we find Appellants do not establish that the
Examiner erred in determining Appellants’ limitation of translating each of
the alternative P-Schemas into a storage configuration and related statistics
for the alternative DBMS is indefinite under 35 U.S.C. § 112, second
paragraph. Appellants also do not establish that the Examiner erred in
determining Florescu discloses each feature of Appellants’ invention, in
particular, the evaluation of an attribute of each mapping with respect to an
expected workload of the storage system and the selection of a mapping
based on an attribute that is most advantageous for expected system
workload. Appellants also fail to demonstrate the Examiner erred in
establishing a proper prima facie case of obviousness in that Florescu and
17
Appeal 2008-004503
Application 10/342,551

Castelli teach utilizing a greedy heuristic to select the alternative mapping
and selecting the most efficient of the alternative mappings on a cost basis,
and in that motivation exists for the combination.

DECISION
We affirm the Examiner's rejection of claims 1-5 and 9-19 under 35
U.S.C. §§ 112, second paragraph, 102(b), and 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

dal

Ryan, Mason & Lewis, LLP
90 Forest Avenue
Locust Valley, NY 11560
18