Ex Parte STEIN et al

Patent Trial and Appeal Board

Jul 6, 2016

12635395 (P.T.A.B. Jul. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/635,395 12/10/2009
44870 7590 07/08/2016
MOORE & VAN ALLEN, PLLC For IBM
P.O. Box 13706
3015 Carrington Mill Boulevard, Suite 400
Research Triangle Park, NC 27709
FIRST NAMED INVENTOR
YANW. STEIN
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.
RSW920090080US 1-129 9274
EXAMINER
PULLIAM, CHRISTY ANN R
ART UNIT PAPER NUMBER
2164
NOTIFICATION DATE DELIVERY MODE
07/08/2016 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):
iplaw@mvalaw.com
usptomail@mvalaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YAN W. STEIN, SANDEEP R. PATIL,
HARSHWARDHAN S. MULAY, andABHINAYR. NAGPAL 1
Appeal2014-006528
Application 12/635,395
Technology Center 2100
Before LARRY J. HUME, NATHAN A. ENGELS, and
JAMES W. DEJMEK, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-3, 5-10, and 12-20. Claims 4 and 11 have been canceled. App.
Br. 12, 14. We have jurisdiction over the remaining pending claims under
35 U.S.C. § 6(b).
We reverse.
1 Appellants identify International Business Machines (IBM) Corporation as
the real party in interest. App. Br. 1.
Appeal2014-006528
Application 12/635,395
STATEMENT OF THE CASE
Introduction
Appellants' invention is directed to "databases and retrieving
information from databases, and more particularly to an intelligent
mechanism for identifying ontological hypertext and prefetching and
presenting the target information." Spec. i-f 1.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below with the disputed limitations emphasized in italics:
1. A computer implemented method for identifying ontological
hypertext and pre-fetching and presenting the target information,
compnsmg:
receiving an original query by a database server;
searching the database server to locate an ontological mapping
record in response to receiving the original query, wherein the
ontological mapping record represents an association between
information responsive to the original query and related information,
the related information is additional data to the information
responsive to the original query and is linked to the information
responsive to the original query by ontological hypertext in the
ontological mapping record;
automatically constructing an associated query based on an
equivalent condition defined in the ontological mapping record, the
associated query being used to retrieve the related information; and
presenting information responsive to the original query and the
related information.
The Examiner's Rejections
1. Claims 1-3, 6, 8-10, 12, 13 and 15-20 stand rejected under 35
U.S.C. § 102(e) as being anticipated by Cui et al. (US 2010/0070500 Al;
Mar. 18, 2010) ("Cui"). Final Act. 6-12.
2
Appeal2014-006528
Application 12/635,395
2. Claims 5 and 14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Cui and Xin Jin, An Approach to Web Pre/etching
Agent Based on Web Ontology with Hidden Markov Model, Theor. Adv. And
Appl. Of Fuzzy Logic, ASC 42, pp. 535--43 (0. Castillo et al. eds., 2007)
("Jin"). Final Act. 12-13.
3. Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cui and Chaman (US 2006/0047643 Al; Mar. 2, 2006).
Final Act. 13-14.
Issue on Appeal2
Did the Examiner err in finding Cui discloses "automatically
constructing an associated query based on an equivalent condition defined in
the ontological mapping record, the associated query being used to retrieve
the related information," as recited in claim 1?
ANALYSIS 3
Appellants contend the Examiner erred in finding Cui discloses, inter
alia, constructing an associated query to retrieve related information (i.e.,
additional data) to an original query. App. Br. 8; Reply Br. 3--4. In
particular, Appellants assert the sub-query disclosed by Cui, which the
2 We only address this dispositive issue, and need not address additional,
non-dispositive issues raised by Appellants' arguments.
3 Throughout this Decision, we have considered the Appeal Brief filed
January 3, 2014 ("App. Br."); the Reply Brief filed May 14, 2014 ("Reply
Br."); the Examiner's Answer mailed on March 26, 2014 ("Ans."); and the
Final Office Action ("Final Act.") mailed on June 7, 2013, from which this
Appeal is taken.
3
Appeal2014-006528
Application 12/635,395
Examiner finds corresponds to the claimed associated query, provides
information responsive to the original query and is, therefore, not "additional
data" or "related information," as claimed. Id.
In response, the Examiner explains Cui discloses an original query
may be divided into a number of sub-queries. Ans. 8 (citing Cui i-f 136).
Each sub-query may be answered by at least one data source. Id. Further,
"[t]he answers from each sub-query are then fused to provide the final
answer to the original query." Cui i-f 13 7. The Examiner finds the sub-query
corresponds to the claimed associated query. Ans. 8.
We find Appellants' arguments are persuasive of Examiner error. We
note the Examiner also finds Cui discloses related information as additional
data to the information responsive to the original query. Final Act. 8-9
(citing Cui i-f 16). As part of the example provided by Cui, sub-attributes, or
sub-concepts, associated with an entity (e.g., a telephone number associated
with a customer) may provide additional data (e.g., a telephone number) to
information (e.g., customer name) responsive to an additional query. See
Cui i-f 16. However, the Examiner has not sufficiently explained how such
sub-attributes or sub-concepts are retrieved. 4 Further, as relied on by the
Examiner, Cui discloses the "query is decomposed into sub-queries." Cui
i-f 136. We do not find the decomposing of a query into sub-queries
discloses constructing an associated query, wherein the associated query is
4 We note the Examiner appears to be finding that Cui suggests sub-queries
are used to retrieve the sub-attributes or sub-concepts related to an entity.
However, a rejection of claim 1 under 35 U.S.C. § 103(a) is not before us.
While the Board is authorized to reject claims under 37 C.F.R. § 41.50(b),
no inference should be drawn when the Board elects not to do so. See
Manual of Patent Examining Procedure (MPEP) § 1213.02.
4
Appeal2014-006528
Application 12/635,395
used to retrieve related information (i.e., additional data to the information
responsive to the original query). Rather, the retrieved information (i.e.,
answers) from the sub-queries are "fused to provide the final answer to the
original query." Cui i-f 137. In other words, the information retrieved by the
sub-query is not additional data, but rather form the response to the original
query.
For the reasons discussed supra, we are constrained on this record to
not sustain the Examiner's rejection under 35 U.S.C. § 102(e) of
independent claim 1. For similar reasons, we do not sustain the rejection of
independent claims 10 and 17, which recite similar limitations. 5
Additionally, we do not sustain the rejections of dependent claims 2, 3, 5-9,
12-16, and 18-20.
5 In the event of further prosecution, we invite to the Examiner to determine
whether claims 17-20 are directed to statutory subject matter under 35
U.S.C. § 101. Although claim 17 and claims depending therefrom are
directed to a computer program product, under our jurisprudence, the scope
of the recited "computer readable storage medium" may encompass
transitory media such as signals or carrier waves. See Ex parte Mewherter,
107 USPQ2d 1857 (PTAB 2013) (precedential) (holding recited machine-
readable storage medium ineligible under § 101 since it encompasses
transitory media). Here, the recited "computer readable storage medium" is
not claimed as non-transitory, and the originally-filed Specification does not
expressly and unambiguously disclaim transitory forms, such as signals, via
a definition. See Spec. i-f 16.
5
Appeal2014-006528
Application 12/635,395
DECISION
We reverse the Examiner's decision to reject claims 1-3, 5-10,
and 12-20.
REVERSED
6