Ex Parte Cheng et al

Patent Trial and Appeal Board

Oct 31, 2016

13361800 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/361,800 01/30/2012
63675 7590 11/02/2016
PATTERSON & SHERIDAN, LLP/IBM SVL
24 Greenway Plaza
SUITE 1600
HOUSTON, TX 77046-2472
FIRST NAMED INVENTOR
Qi Cheng
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.
CA920110067US 1 9690
EXAMINER
ALMAN!, MOHSEN
ART UNIT PAPER NUMBER
2159
NOTIFICATION DATE DELIVERY MODE
11/02/2016 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):
P AIR_eofficeaction@pattersonsheridan.com
PSDocketing@pattersonsheridan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte QI CHENG, JOHN F. HORNIBROOK,
TING Y. LEUNG, XIN WU,
DANIEL C. ZILIO, and
CALISTO P. ZUZARTE
Appeal2015-001419
Application 13/361,800
Technology Center 2100
Before ST. JOHN COURTENAY III, JAMES R. HUGHES, and
MELISSA A. RAAP ALA, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 8-27. Claims 1-7 are cancelled. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
Invention
The disclosed and claimed invention on appeal relates to techniques
"for generating statistical views in a database system." Spec. i-f 11.
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Application 13/361,800
Representative Claim
8. A computer program product of statistical view
refinement based on constraints in order to reduce a processing
cost incurred in maintaining statistical views in a database
management system, the computer program product
compnsmg:
a computer-readable memory including hardware and
having computer-readable program code embodied therewith,
the computer-readable program code executable by one or more
computer processors to:
responsive to receiving a request to execute a database
workload, evaluating the database workload in order to generate
a join graph;
identify one or more constraints pertaining to executing
the database workload;
[L 1] evaluate the join graph in order to generate a
plurality of statistical view candidates; and
[L2] programmatically refine the statistical view
candidates by operation of one or more computer processors
when executing the computer-readable program code and based
on the identified one or more constraints in order to generate a
set of refined statistical view candidates, wherein statistical
view generation from the plurality of statistical view candidates
is restricted to the set of refined statistical view candidates.
(Contested limitations LI and L2 are emphasized.)
Rejection
Claims 8-27 are rejected under 35 U.S.C. § 103(a) as being obvious
over the combined teachings and suggestions of El-Helw et al. (US
7,668,804 Bl, Feb. 23, 2010) ("El-Helw"), in view ofKandil et al. (US
2007 /0220058 Al, Sept. 12, 2007) ("Kandil").
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Grouping of Claims
We decide the appeal of independent claims 8 and 15 on the basis of
representative claim 8. To the extent Appellants have not advanced
separate, substantive arguments for the remaining claims on appeal, such
arguments are considered waived. See 37 C.F.R. § 41.37(c)(l)(iv).
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. We find Appellants' arguments unpersuasive for the reasons
discussed infra. We adopt as our own: (1) the findings and legal conclusions
set forth by the Examiner in the action from which this appeal is taken, and
(2) the findings, legal conclusions, and explanations set forth in the Answer
in response to Appellants' arguments (Ans. 4--30). We highlight and address
specific findings and arguments for emphasis in our analysis below.
Rejection of Independent Claim 8 under 35 U.S.C. § 103(a)
Issue: Under 35 U.S.C. § 103(a), did the Examiner err in finding the
cited combination of El-Helw and Kandil would have taught or suggested
contested limitations LI and L2, within the meaning of independent claim 8,
under a broad but reasonable interpretation? 1
1 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997); Cf with Spec. i-f 71 ("While the foregoing is
directed to embodiments of the present invention, other and further
embodiments of the invention may be devised without departing from the
basic scope thereof, and the scope thereof is determined by the claims that
follow.").
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Regarding independent claim 8, Appellants contend:
Respectfully, El-Helw does not disclose at least the
following limitations recited in independent claim 8:
[L 1] [ e ]valuate the join graph in order to generate a
plurality of statistical view candidates; and
[L2] programmatically refine the statistical view
candidates ... based on the identified one or more
constraints in order to generate a set of refined statistical
view candidates, wherein statistical view generation from
the plurality of statistical view candidates is restricted to
the set of refined statistical view candidates.
App. Br. 15.
Id.
In support, Appellants contend:
The portions of El-Helw cited by the Office generally discuss
choosing a subset of candidate statistical views that maximizes
a cost/benefit ratio, see, e.g., El-Helw, col. 12, lines 23-28. At
the same time, even assuming, arguendo, that the candidate
statistical views in El-Helw correspond to the recited statistical
view candidates, El-Helw is still silent on any join graph being
evaluated in order to generate the candidate statistical views to
which statistical view generation from the statistical view
candidates is restricted. Further, Kandi! does not cure these
deficiencies of El-Helw. Therefore, El-Helw, even in view of
Kandi!, does not teach or suggest at least the underlined
limitations above.
Limitation LI of Independent Claim 8
Regarding Appellants' contention that "El-Helw is still silent on any
join graph being evaluated in order to generate the candidate statistical views
to which statistical view generation from the statistical view candidates is
restricted," we find unpersuasive Appellants' assertion that "Kandi! does not
cure these deficiencies of El-Helw." App. Br. 15.
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We note the Examiner (Final Act. 3) finds El-Helw (cols. 6-7) teaches
the use (i.e., evaluation) of joins regarding database queries for the purpose
of "generat[ing] a plurality of statistical view candidates," as claimed (claim
8, contested limitation LI). El-Helw describes, in pertinent part:
In one embodiment, query optimizer 308 can be a bottom-up
optimizer that generates plans that transform an n-way join into
a sequence of two-way joins using binary join operators ....
The candidate statistical view set will contain the corresponding
definitions for each of the partial queries that contain the
relevancy, local, and join predicates appropriate for the partial
queries.
El-Helw, col. 6, 1. 59-col. 7, 1. 2 (emphasis added).
Although Appellants recite the claim language (App. Br. 15),
Appellants do not substantively argue that El-Helw does not teach a join
graph.2 The Examiner (Ans. 4) considers the description in Appellants'
Specification (i-f 49), 3 and adopts a claim construction for the claim 8 term
"join graph": A "join graph is nothing more than identifying joins in a
workload which is a query statement." (Ans. 4). Appellants have not
rebutted the Examiner's claim interpretation. Therefore, on this record, we
2 See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the
Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.").
3 See Spec. i-f49 ("At step 320, the statistical view advisor 152 generates a
join graph based on the received workload. The join graph is subsequently
used in identifying which joins are used in conjunction with one another, to
form one or more statistical views.").
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are not persuaded the Examiner's reading is overly broad, unreasonable, or
inconsistent with Appellants' Specification. 4
We note El-Helw describes joins (col. 10, 1. 59) in the context of
graph structure 460 (see El-Helw, col. 10, 1. 67- col. 11, 1. 1 ("e.g., a sample
graph structure is shown as graph 460 of FIG. 4C")). See also, El-Helw, col.
11, 11. 7-9: "Each group Vo can contain the views that involve the same set
of tables and have the same join predicates between these tables."
(Emphasis added). Because we find join operations of relational database
tables are notoriously well known in the art (as evidenced by El-Helw, e.g.,
col. 1, 11. 24--25 5), and because Appellants fail to substantively address the
Examiner's specific findings (Ans. 4--6), on this record, we are not
persuaded the Examiner erred regarding contested limitation L 1.
Limitation L2 of Independent Claim 8
The Examiner finds El-Helw (col. 12, 11. 23-35) teaches or suggests
contested limitation L2 of claim 8:
programmatically refine the statistical view candidates ...
based on the identified one or more constraints in order to
generate a set of refined statistical view candidates, wherein
statistical view generation from the plurality of statistical view
candidates is restricted to the set of refined statistical view
candidates.
4 Because "applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee." In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
5 See El-Helw, e.g., col. 1, 11. 24--25 ("The performance of a query plan is
determined largely by the order in which the tables are joined.").
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Final Act. 4. Appellants fail to substantively address these findings, and
merely assert that El-Helw does not teach the recited limitation. See App.
Br. 15. Because Appellants fail to address the Examiner's specific findings,
on this record, we are not persuaded the Examiner erred regarding contested
limitation L2.
Comb inability under § 103
Appellants additionally contend the Examiner has improperly
combined El-Helw and Kandil: "the Office merely posits that El-Helw can
be modified using Kandi!, on the basis of generally desirable features - such
as increasing usability- and without any specific explanation of how the
proposed combination of El-Helw and Kandi! would synergistically
interoperate to produce the claimed embodiment." App. Br. 16.
However, the Supreme Court guides: "[I]f 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."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Moreover, "[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results." Id. at 416. "If
a person of ordinary skill can implement a predictable variation, § 103 likely
bars its patentability." Id. at 417.
This reasoning is applicable here. On this record, we find the
Examiner provides sufficient articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness (Final Act. 4).
Moreover, we find El-Helw and Kandil are analogous art to each other, and
to the claimed invention. See, e.g., El-Helw, Abstract:
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A workload to be handled by a database system can be
identified. The workload can include at least one query that the
database system is to handle. A set of at least one candidate
statistical views ( statviews) to be utilized when optimizing the
workload can be enumerated. A benefit value and a cost value
of the each of the enumerated candidate statistical views
relative to the entire workload can be computed.
See, e.g., Kandil, Abstract:
A method, computer program product, and system for
managing statistical views in a database system are provided.
The method, computer program product, and system provide
for collecting data relating to optimization and execution of a
workload in the database system and automatically generating a
set of one or more statistical views based on the collected
optimization and execution data.
Appellants do not point to any evidence of record that shows
combining the references in the manner proffered by the Examiner would
have been "uniquely challenging or difficult for one of ordinary skill in the
art" or would have "represented an unobvious step over the prior art."
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007) (citing KSR, 550 U.S. at 418). Nor have Appellants provided
objective evidence of secondary considerations which our reviewing court
guides "operates as a beneficial check on hindsight." Cheese Systems, Inc.
v. Tetra Pak Cheese and Powder Systems, Inc., 725 F.3d 1341, 1352 (Fed.
Cir. 2013).
Therefore, we find unavailing Appellants' contention "the proposed
modification of El-Helw using Kandil is merely conclusory." App. Br. 16.
On this record, and based upon a preponderance of the evidence, we
are not persuaded of error regarding the Examiner's ultimate legal
conclusion of obviousness regarding contested limitations L 1 and L2 of
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representative claim 8. Accordingly, we sustain the Examiner's rejection of
representative claim 8, and the rejection of grouped independent claim 15
(not separately argued), which falls with claim 8 (see Grouping of Claims,
supra).
Dependent Claims 9-14 and 16--2 7
Regarding the remaining dependent claims, for which Appellants
purport to advance separate arguments, we find the Examiner provides
sufficiently detailed mappings of the claim terms to the corresponding
features found in the cited El-Helw and Kandil references to support the
prima facie case of obviousness. The Federal Circuit guides, "the prima
facie case is merely a procedural device that enables an appropriate shift of
the burden of production." Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir.
2007).
[A ]ll that is required of the office to meet its prima facie
burden of production is to set forth the statutory basis of the
rejection and the reference or references relied upon in a
sufficiently articulate and informative manner as to meet the
notice requirement of [35 U.S.C.] § 132. As the statute itself
instructs, the examiner must "notify the applicant," "stating
the reasons for such rejection," "together with such
infonnation and references as may be useful in judging the
propriety of continuing prosecution of his application."
In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011).
Here, the Examiner's burden of establishing a prima facie case is met
by "adequately explain[ing] the shortcomings [the USPTO] perceives so that
the applicant is properly notified and able to respond." Hyatt, 492 F.3d at
1370. In reviewing the record, we find the Examiner has met the notice
requirement of 35 U.S.C. § 132 by providing a detailed statement of
rejection with sufficiently clear mappings and explanations. Final Act. 5-
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17. We note it is only "when a rejection is so uninformative that it prevents
the applicant from recognizing and seeking to counter the grounds for
rejection" that the prima facie burden has not been met and the rejection
violates the minimal requirements of 35 U.S.C. § 132. Chester v. Miller,
906 F.2d 1574, 1578 (Fed. Cir. 1990).
Such is not the case here. By making specific factual findings
regarding the dependent claims, and satisfying the notice requirement of
35 U.S.C. § 132 to establish the prima facie case, the Examiner shifted the
burden of production to Appellants to go forward with evidence showing
why such factual findings are erroneous-a burden we find Appellants have
failed to meet.
In traversing the Examiner's rejection of the remaining dependent
claims, we observe Appellants adopt a pattern of argument in the Brief
which: (1) reproduces the portions ofEl-Helw and/or Kandil cited by the
Examiner, (2) merely asserts the cited portions of the references are "silent"
regarding the contested claim limitations, and (3) fails to substantively
respond to the specific findings set forth by the Examiner (Final Act. 5-17)
for each contested dependent claim.
In the Answer (6---30), the Examiner provides a detailed responsive
explanation to Appellants' nominal arguments regarding the contested
dependent claims. Appellants have not further responded to these
explanations, because no Reply Brief was filed.
Because Appellants fail to provide any persuasive evidentiary basis to
support their assertions regarding the remaining dependent claims, we find
Appellants' arguments are merely conclusory, and do not meet the burden of
showing error in the Examiner's prima facie case of obviousness. App. Br.
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17--42. To the extent Appellants reproduce the record by copying the
portions of the references cited by the Examiner into the Brief, and then
merely assert the cited portions are "silent" regarding the claim language, we
find Appellants fail to advance separate substantive, persuasive arguments
explaining why the Examiner has erred. Mere 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); In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984).
Therefore, on this record, we find Appellants have failed to
substantively traverse the merits of the rejection of the contested dependent
claims, by specifically explaining why the Examiner erred. Under our PT AB
procedural rule: "A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim."
37 C.F.R. § 41.37(c)(l)(iv).
If an Appellant fails to present arguments on a particular issue----or,
more broadly, on a particular rejection-the Board will not, as a general
matter, unilaterally review those uncontested aspects of the rejection.
Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010) (precedential) (citing,
inter alia, Hyatt v. Dudas, 551F.3d1307, 1313-14 (Fed. Cir. 2008) (the
Board may treat arguments Appellant failed to make for a given ground of
rejection as waived)).
Therefore, after considering the totality of the record, including the
evidence relied upon by the Examiner, with due consideration to the
insufficiency of the arguments presented, we find Appellants have not
shown error in the Examiner's prima facie case of obviousness. On this
record, we find a preponderance of the evidence supports the Examiner's
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underlying factual findings and ultimate legal conclusion of obviousness for
all contested claims on appeal. Accordingly, we sustain the Examiner's
rejection of claims 8-27 under§ 103(a).
DECISION
We affirm the Examiner's rejection of claims 8-27 under 35 U.S.C.
§ 103(a).
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R. § 41.50(±).
AFFIRMED
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