Ex Parte Nathoo

Board of Patent Appeals and Interferences

May 30, 2012

11562451 (B.P.A.I. May. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte AMIR NATHOO
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Appeal 2010-000201
Application 11/562,4511
Technology Center 2100
____________________

Before HOWARD B. BLANKENSHIP, JOHN A JEFFERY, and
JAMES R. HUGHES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed November 22, 2006 claiming priority of GB Patent App.
No. 0524017.1 filed November 24, 2005. The real party in interest is
International Business Machines Corp. (Br. 1.)
Appeal 2010-000201
Application 11/562,451

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STATEMENT OF THE CASE
Appellant appeals from the Examiner’s rejection of claims 1-15. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellant’s Invention
The invention at issue on appeal concerns a system, method, and
storage medium for dynamically generating a categorization scheme. (Spec.
¶¶ [0001], [0009], [0010]; Abstract.) 2
Representative Claim
Independent claim 1, reproduced below with the key disputed
limitations emphasized, further illustrates the invention:
1. A method for generating a categorization scheme
including a set of one or more categories for a collection of data
items, each data item including at least one data element having
an element name and an element value, comprising:
a computer performing the steps of;
identifying a common data element for each one of the
data items, each of the identified common data elements having
equivalent element names;
compiling a collection of element values comprising an
element value for each of the common data elements; and
defining the set of one or more categories to contain the
different values in the collection of element values; and
outputting the one or more categories.

2 We refer to Appellant’s Specification (“Spec.”) and Appeal Brief (“Br.”)
filed March 31, 2009. We also refer to the Examiner’s Answer (“Ans.”)
mailed June 30, 2009.
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Rejections on Appeal3
1. The Examiner rejects claims 1, 2, 6, 7, 11, and 12 under 35
U.S.C. §102(b) as being anticipated by Sergio Lujan-Mora & Manuel
Palomar, Reducing Inconsistency in Integrating Data from Different
Sources, 209-218, IEEE (2001) (“Palomar”).
2. The Examiner rejects claims 3, 4, 8, 9, 13, and 14 under 35
U.S.C. §103(a) as being unpatentable over Palomar and U.S. Patent App.
Pub. No. US 2004/0078386 Al (“Moon”).
3. The Examiner rejects claims 5, 10, and 15 under 35 U.S.C.
§103(a) as being unpatentable over Palomar and U.S. Patent No. US
7,246,128 B2 (“Jordahl”).

ISSUE
Based on our review of the administrative record, Appellant’s
contentions, and the Examiner’s findings and conclusions, the pivotal issue
before us is as follows:
Does the Examiner err in finding that Palomar discloses “identifying a
common data element for each one of the data items, each of the identified
common data elements having equivalent element names” and “defining the
set of one or more categories to contain the different values in the collection
of element values” within the meaning of claim 1 and commensurate claims
6 and 11?

3 The Examiner has withdrawn a rejection of claims 1-5 under 35 U.S.C.
§101 (see Ans. 3, 15). Accordingly, we do not address Appellant’s
arguments directed thereto (see Br. 4, 7-8).
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FINDINGS OF FACT
We adopt the Examiner’s findings in the Answer and the Final Office
Action as our own, except as to those findings that we expressly overturn or
set aside in the Analysis that follows.

ANALYSIS
Claims 1, 2, 6, 7, 11, and 12
Based on Appellant’s arguments (Br. 4-6) we select claim 1 as
representative of Appellant’s arguments and groupings. 37 C.F.R.
§ 41.37(c)(1)(vii).
Appellant contends that “Palomar does not show ‘identifying a
common data element for each one of the data items, each of the identified
common data elements having equivalent element names’” (Br. 4) and “[t]he
Office [conflates] the terms of data item, data element of the instant
invention with data value and attribute as used in Palomar” (Br. 6). In
particular, Appellant asserts that “Palomar is concerned with inconsistencies
of data items and never discusses data elements having equivalent element
names.” (Br. 4; see Br. 5-6.)
The Examiner sets forth a detailed explanation of the anticipation
rejection in the Examiner’s Answer with respect to each of the claims and, in
particular, the rejection of claim 1. (Ans. 3-4, 11-15.) Specifically, the
Examiner submits that Palomar describes database records (rows), database
attributes (columns or fields), and data values in the records for each of the
attributes and that Appellant’s claimed “data items,” data elements,” and
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“element values” respectively read on Palomar’s records, attributes, and data
values. (Ans. 13.)
Upon consideration of the evidence on this record and each of
Appellant’s contentions, we find that the preponderance of evidence on this
record supports the Examiner’s findings and ultimate legal conclusion that
Palomar anticipates the subject matter of Appellant’s claim 1. Accordingly,
we sustain the Examiner’s rejection of claim 1 for the reasons set forth in the
Answer, which we incorporate herein by reference. (Ans. 3-4, 11-15.)
We initially note that a portion of the disputed limitation, “each of the
identified common data elements having equivalent element names” (claim
1), is essentially non-functional descriptive material in that the limitation
simply states that the common data elements merely have equivalent
element names. The “equivalent element names” are not expressly utilized
in the claim to do anything. As such, the “equivalent element names”
constitute non-functional descriptive material, which merely corresponds to
data and recites what the information or data represents. The acts of
“compiling” element values and “defining” categories are the same
regardless of what the data (equivalent element name) constitutes or how the
data may be named and do not further limit the claimed invention either
functionally or structurally. The informational content of the data, and in
particular the “equivalent element names,” thus represents non-functional
descriptive material, which “does not lend patentability to an otherwise
unpatentable computer-implemented product or process.” Ex parte Nehls,
88 USPQ2d 1883, 1889 (BPAI 2008) (precedential). See Ex parte Curry, 84
USPQ2d 1272, 1274 (BPAI 2005) (informative) (Fed. Cir. Appeal No.
2006-1003), aff’d, (Rule 36) (June 12, 2006) (“wellness-related” data in
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databases and communicated on distributed network did not functionally
change either the data storage system or the communication system used in
the claimed method). See also In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
2004); Nehls, 88 USPQ2d at 1887-90 (discussing non-functional descriptive
material).
Even if we arguendo ascribe some patentable weight to the limitation,
as explained by the Examiner, Palomar describes column/attribute names
from different databases that are identical (see Ans. 12; Palomar, p. 210, Fig.
1(describing different source databases combined in a repository database) –
“there are inconsistencies in the attribute/element values, but not the
attribute names (e.g. the column name of Affiliation) (thus, making
equivalent element names)” (Ans.14). We agree that identical database
column/attribute names (e.g. “Affiliation”) are “equivalent element names.”
Further, we note that Appellant’s arguments concerning Palomar’s
ultimate objective/purpose – “Palomar is concerned with inconsistencies of
data items” (Br. 4; see Br. 5-6) and “Palomar does not create a
categorization scheme, it reduces inconsistency in the data values” (Br. 6) –
is irrelevant with respect to the present rejection. Palomar performs a
categorization on the data within a particular field/column, namely by
determining if the data is inconsistent (as opposed to consistent) and
replacing the inconsistent data to make it consistent. (Ans. 14-15; Palomar,
p. 210, Fig. 1; Abstract (p. 209); p. 209 (column 2 (middle)) to p. 210
(column 1 (middle)); p. 212 (column 2 (bottom)) to p. 213 (column 1 (top)) ;
p. 217 (column 1 (bottom)).) As such, Palomar discloses each limitation of
Appellant’s claim – i.e., “identifying a common data element” (a particular
column) “for each one of the data items” (each record/row), “each of the
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identified common data elements having equivalent element names”
(identical column/attribute names); “compiling a collection of element
values comprising an element value for each of the common data elements”
(common data (e.g., “Universidad de Alicante” within the “Affiliation”
attribute)); and “defining the set of one or more categories to contain the
different values in the collection of element values” (categorizing the data as
consistent or inconsistent and replacing the inconsistent data (e.g., replacing
“Alicante University” and “Universidad Alicante” with “Universidad de
Alicante”)). Appellant’s claim does not preclude identifying or replacing
inconsistent data (element values). We also note that Appellant failed to file
a Reply Brief to rebut the findings and responsive arguments made by the
Examiner in the Answer.
Thus, we find Appellant’s contrary arguments unpersuasive of error in
the Examiner’s anticipation rejection of representative claim 1. Appellant
also does not persuade us of error in the Examiner’s anticipation rejection of
independent claims 6 and 11, which include limitations of commensurate
scope, and dependent claims 2 (dependent on claim 1), 7 (dependent on
claim 6), and 12 (dependent on claim 11), not separately argued with
particularity (supra). Accordingly, we affirm the Examiner’s anticipation
rejection of claims 1, 2, 6, 7, 11, and 12.
Claim 3-5, 8-10, and 13-15
Based on Appellant’s arguments (Br. 6-7) we select claim 3 as
representative of Appellant’s arguments and groupings. 37 C.F.R.
§ 41.37(c)(1)(vii).
Appellant merely reiterates the arguments made with respect to
Palomar and claim 1, which we address (supra), and further contend that
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“Moon does not correct the deficiencies of the anticipation rejection recited
above.” (Br. 6.) Appellant does not dispute the Examiner’s findings with
respect to Moon, nor does Appellant explain why one of ordinary skill in the
art could not have combined Palomar and Moon. (Br. 6-7.) We find
Appellant’s contrary arguments unpersuasive of error in the Examiner’s
obviousness rejection of representative claim 3 for these reasons and the
reasons discussed with respect to claim 1 (supra). Appellant also does not
persuade us of error in the Examiner’s obviousness rejection of dependent
claims 3 and 4 (dependent on claim 1), 8 and 9 (dependent on claim 6), and
13 and 14 (dependent on claim 11), not separately argued with particularity
(supra).
With respect to claims 5, 10, and 15, Appellant does not separately
argue these claims. (Br. 7.)
Accordingly, we affirm the Examiner’s obviousness rejection of
claims 3-5, 8-10, and 13-15.

CONCLUSIONS OF LAW
Appellant has not shown that the Examiner erred in rejecting claims 1,
2, 6, 7, 11, and 12 under 35 U.S.C. § 102(b).
Appellant has not shown that the Examiner erred in rejecting claims
3-5, 8-10, and 13-15 under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejection of claims 1, 2, 6, 7, 11, and 12
under 35 U.S.C. § 102(b).
We affirm the Examiner’s rejection of claims 3-5, 8-10, and 13-15
under 35 U.S.C. § 103(a).
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Application 11/562,451

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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

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