Ex Parte STEIN et alDownload PDFPatent Trial and Appeal BoardJul 6, 201612635395 (P.T.A.B. Jul. 6, 2016) Copy Citation 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 Copy with citationCopy as parenthetical citation