INTERNATIONAL BUSINESS MACHINES CORPORATION

Patent Trials and Appeals Board

Jun 9, 2020

2019001431 (P.T.A.B. Jun. 9, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/761,256 02/07/2013 Georges-Henri Moll GB920120032US1 7657
11445 7590 06/09/2020
IBM Corporation - Endicott Drafting Center
1701 North Street
Building 256-3
Endicott, NY 13760
EXAMINER
GOFMAN, ALEX N
ART UNIT PAPER NUMBER
2163
NOTIFICATION DATE DELIVERY MODE
06/09/2020 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):
edciplaw@us.ibm.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Ex parte GEORGES-HENRI MOLL and PHILIPPE REFALO

Appeal 2019-001431
Application 13/761,256
Technology Center 2100

Before ERIC S. FRAHM, JUSTIN BUSCH, and MICHAEL T. CYGAN,
Administrative Patent Judges.

CYGAN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–7, 9–17, and 19, which are all of the
pending claims in the application. Appeal Br. 1, 4. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
International Business Machines Corporation. Appeal Br. 1.
Appeal 2019-001431
Application 13/761,256

2
CLAIMED SUBJECT MATTER
The claimed invention generally relates to
Independent claim 1 is illustrative:
1. A method of processing instruction code to solve a
problem, comprising:
identifying a first relational data table operating using a
relational logical operation on a second relational data table in
the instruction code, the relational logical operation comprising
at least multiplication;
selecting one or more sets of decision variables from identified
tables and operation;
constructing one or more equivalent sets of serialized
instructions comprising serial logical operations equivalent to
the relational logical operation operating on one or more of the
identified sets of decision variables; and
reducing computer processing time required by a computer
processor to determine a solution to the problem by processing,
using the computer processor, the equivalent sets of serialized
instructions instead of the relational logical operation.
Appeal Br. 11 (Claims App.).
Independent claims 11 and 19 recite, respectively, a computer system
and a computer-readable medium that perform the method of claim 1.
Appeal Br. 13–14. Dependent claims 2–7, 9, 10, 12–17, and 18 each
incorporate the limitations of their respective independent claims. Id. at 11–
14.

Appeal 2019-001431
Application 13/761,256

3
REFERENCES
Name Reference Date
Boswell et al.
(Boswell)
US 6,862,506 B2 Mar. 1, 2005
Graefe et al.
(Graefe)
US 2007/0130110 A1 June 7, 2007
Kneisel et al.
(Kneisel)
US 2012/0151437 A1 June 14, 2012

REJECTIONS
Claims 1–7, 9–17, and 19 are rejected under 35 U.S.C. § 101 as being
ineligible subject matter.
Claims 1–7, 11–17, and 19 are rejected under 35 U.S.C. § 103(a) as
being obvious over the combination of Graefe and Kneisel.
Claims 9 and 10 are rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Graefe, Kneisel, and Boswell.

OPINION
A. Subject Matter Eligibility
1. Principles of Law
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor,
subject to the conditions and requirements of this title.
There is, however, an implicit, longstanding exception to patent-
eligible subject matter in 35 U.S.C. § 101: “[l]aws of nature, natural
phenomena, and abstract ideas are not patentable.” Alice Corp. v. CLS Bank
Appeal 2019-001431
Application 13/761,256

4
Int’l, 573 U.S. 208, 216 (2014) (citation omitted). This exception precludes
patenting of “the basic tools of scientific and technological work” from
which all inventions spring. Id. at 216–17 (quotation marks and citation
omitted). Invention or discovery under § 101 is distinguished as being the
application of such tools to an end otherwise satisfying the requirements of
the patent statutes. See Gottschalk v. Benson, 409 U.S. 63, 67 (1972).
The Supreme Court has established a framework for this eligibility
determination. Where a claim is directed towards a law of nature, natural
phenomena, or abstract idea, the elements of the claim as a whole must
ensure that the claim, in practice, amounts to significantly more than a patent
on the law of nature, natural phenomena, or abstract idea itself. Alice, 573
U.S. at 217–18. In applying this eligibility analysis, our reviewing court has
stated, “the decisional mechanism courts now apply is to examine earlier
cases in which a similar or parallel descriptive nature can be seen[,] . . . the
classic common law methodology for creating law when a single governing
definitional context is not available.” Amdocs (Isr.) Ltd. v. Openet Telecom,
Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (citation omitted).
To address the growing body of precedent, the USPTO recently
published revised examination guidance on the application of § 101. 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 50
(Jan. 7, 2019) (hereinafter “2019 Guidance”). The 2019 Guidance seeks to
improve the clarity of the subject matter eligibility analysis and improve
consistency of this analysis across the USPTO. Id.
Under the 2019 Guidance, we first look to whether the claim is
directed to a judicial exception because:
Appeal 2019-001431
Application 13/761,256

5
(1) the claim recites a law of nature, natural phenomenon, or abstract
idea, the last of which includes certain groupings, identified as
mathematical concepts, certain methods of organizing human activity
and mental processes; and
(2) the claim as a whole fails to recite additional elements that
integrate the judicial exception into a practical application (see
MANUAL OF PATENT EXAMINATION PROCEDURE (hereinafter “MPEP”)
§ 2106.05(a)–(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
adds a specific limitation beyond the judicial exception that are not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or instead,
simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See 2019 Guidance, passim.
2. Analysis
We have reviewed the Examiner’s subject matter eligibility rejection
(Ans. 4–6) in light of Appellant’s contentions that the Examiner has erred
(Reply Br. 2–4). We are not persuaded by Appellant’s contention of
Examiner error in rejecting claims 1–7, 9–17, and 19 under 35 U.S.C. § 101.
We begin with claim 1.
a) “Recites an Abstract Idea”
The Examiner, in a rejection newly made in the Examiner’s Answer,
has determined claim 1 to be directed to “the abstract idea of identifying
Appeal 2019-001431
Application 13/761,256

6
data, such as a logical operation and decision variables; and manipulating
data using mathematical correlations by constructing ‘equivalent sets of
serialized instructions.’” Ans. 4. We understand the corresponding
limitations to be:
identifying a first relational data table operating using a
relational logical operation on a second relational data table in
the instruction code, the relational logical operation comprising
at least multiplication;
selecting one or more sets of decision variables from identified
tables and operation; [and]
constructing one or more equivalent sets of serialized
instructions comprising serial logical operations equivalent to
the relational logical operation operating on one or more of the
identified sets of decision variables.
The Examiner has found these limitations to be similar to concepts
previously identified by the courts as abstract, such as “Digitech, which
describes the abstract idea as organizing and manipulating information
through mathematical correlations.” Id. at 4–5 (citing Digitech Image
Techs., LLC. v. Elecs. for Imaging, 758 F.3d 1344 (Fed. Cir. 2014)).
The USPTO’s 2019 Guidance states that the abstract idea exception
includes mathematical concepts “when recited as such in a claim
limitation(s) (that is when recited on their own or per se).” 2019 Guidance,
84 Fed. Reg. at 52. In particular, Updated Guidance issued by the USPTO
in October 2019 characterizes mathematical concepts as including
mathematical relationships, mathematical formulas or equations, and
mathematical calculations. October 2019 Update: Subject Matter Eligibility
3–4, accessible at https://www.uspto.gov/sites/default/files
/documents/peg_oct_2019_update.pdf.
Appeal 2019-001431
Application 13/761,256

7
Claim 1 recites the mathematical operation of multiplication, in the
form of identifying a relational logical operation comprising at least
multiplication. Appeal Br. 11 (Claims App.). Claim 1 further comprises
constructing serial logical operations equivalent to the multiplicative
relational operation. Id. The Specification provides an example wherein A
and B are relational tables having data columns a, b, and c, as illustrated
below. Fig. 5.

Figure 5 illustrates relational data comprising Tables A and B.
Based upon the specific data in columns a, b, and c, the relational
operation A(c).*(a,b).B(c) is converted to the serial operation 10*x + 20*y +
30*z + 100*u + 100*v. Figs. 5, 6; Spec. ¶¶ 54–55.
Thus, claim 1 converts a relational mathematical operation involving
multiplication to a serial mathematical operation involving multiplication.
This type of mathematical operation, involving multiplicative calculations,
Appeal 2019-001431
Application 13/761,256

8
falls within the mathematical concept grouping. October 2019 Update 4
(characterizing a “mathematical operation (such as multiplication)” as a
mathematical calculation). Thus, we determine that the above-identified
limitations recite an abstract idea.
Our determination is consistent with the Supreme Court’s analysis in
Gottschalk v. Benson, 409 U.S. 63 (1972). Benson claimed a method of
converting binary-coded decimal numerals to pure binary numerals. Id. at
67. The Court found that this method “varies the ordinary arithmetic steps a
human would use by changing the order of the steps, changing the
symbolism for writing the multiplier used in some steps, and by taking
subtotals after each successive operation.” Id. The Court described
Benson’s claimed method as “a generalized formulation for programs to
solve mathematical problems of converting one form of numerical
representation to another.” Id. at 65. The Court reasoned that patenting
Benson’s claimed conversion would, in practical effect, patent an idea. Id.
at 71.
Like Benson, claim 1 recites a generalized formulation for programs
to solve mathematical problems of converting one form of numerical
representation (relational multiplication) to another (serial multiplication).
We determine that the Court’s analysis in Benson therefore supports the
Examiner’s finding that claim 1 recites an abstract idea.
We further determine that the above-identified limitations of claim 1
recite acts of observation (“identifying . . .”), judgment (“selecting . . .”),
evaluation (“constructing one or more equivalent sets . . .”). We further
determine that, in view of the example discussed supra, one could
practically perform these actions mentally, or with the aid of pen and paper.
Appeal 2019-001431
Application 13/761,256

9
Such acts are characteristic of mental processes, which comprise a category
of abstract ideas. October 2019 Guidance, 7–9.
Under our controlling guidance, consistent with Court precedent,
claim 1 recites an abstract idea under Step 2A, Prong 1.
b) “Directed to an Abstract Idea”
Having determined that claim 1 recites an abstract idea, we next
determine, under Step 2A, Prong 2 of the 2019 Guidance, whether the claims
are directed to that abstract idea, or whether the claims integrate the abstract
idea into a practical application of that abstract idea. 2019 Guidance, 84
Fed. Reg. at 54.
The Examiner finds claim 1 to have elements additional to those
limitations reciting an abstract idea; namely, generic computer device
components including a processor. Ans. 5. The Examiner further
determines that the involvement of the computing device amounts to no
more than executing the abstract idea using computer functions. Id. The
Examiner further finds that the additional, generically recited elements do
not improve computer technology or any other technology, or provide
meaningful limitations to the abstract idea. Id.
Appellant disagrees, arguing that claim 1 represents an improvement
to computer technology by resulting in a reduced processing time. Reply
Br. 3. Appellant argues eligibility based upon Enfish LLC v. Microsoft
Corp., in which a self-referential database, claimed as a set of rules,
provided an improvement to computer-related technology. Id. at 2.
The USPTO’s 2019 Guidance provides considerations, drawn from
prior court precedent, that indicate that an additional element or combination
of elements may have integrated a recited abstract idea into a practical
Appeal 2019-001431
Application 13/761,256

10
application. 2019 Guidance, 84 Fed. Reg. at 55. One such consideration is
whether the additional element(s) reflect an improvement in the functioning
of a computer or another technology or technical field. Id. Considerations
indicating a lack of a practical application of the recited abstract idea include
additional element(s) that amount to an instruction to implement the abstract
idea on a computer or to otherwise instruct to “apply [the abstract idea].” Id.
Other such considerations indicating a lack of a practical application include
additional elements that add insignificant extra-solution activity to the
abstract idea, or that merely link the abstract idea to a particularly
technological environment. Id.
Under this framework, we analyze the additional elements in claim 1,
which, as discussed supra, are:
[R]educing computer processing time required by a computer
processor to determine a solution to the problem by processing,
using the computer processor, the equivalent sets of serialized
instructions instead of the relational logical operation.
We construe this language as the action of processing the sets of
serialized instructions (which were constructed in the limitations identified
as an abstract idea) by a computer processor. The processing is claimed to
reduce computer processing time relative to the time it would take to process
the equivalent relational logical operation. The reduction of computer time
is explained to be achieved through the conversion of the relationships to
serial operations, which require a lesser amount of computer processing
relative to relational operations. Spec. ¶ 4 (“[the mathematical notation] can
lead to very complex expressions when used together with complex/nested
data structures”); Reply Br. 3 (“Solving such complex expressions would
inherently require substantial computer processing power and processing
Appeal 2019-001431
Application 13/761,256

11
time”). Because the conversion of the relationships to serial operations is
part of the abstract idea, rather than any particular function of the processor,
any alleged improvement to computer processing time would therefore be
due to the abstract mental or mathematical actions.
Viewing the abstract idea together with the additional elements, the
involvement of the additional computer elements amounts to mere
instructions to implement the abstract idea on a computer. The claim does
not limit how those instructions are used by the processor, merely instructing
one to “us[e] the computer processor” to process the sets of serialized
instructions. Appeal Br. 11 (Claims App.). Furthermore, claim 1 does not
require that the construction of serial operations themselves be performed by
a computer, only that the serial operations, once constructed, be processed
by a computer. Id. Consequently, the reduction in computer processing
time, which is the alleged improvement to technology, results from the
construction of equivalent sets, which is part of the abstract idea.
Accordingly, we are not persuaded by Appellant that the reduction in
processing time reflects an improvement in the functioning of the computer.
Rather, we agree with the Examiner that involvement of the computer, set
forth in the additional limitations of claim 1, amounts to no more than
instructions to implement the claimed mathematical problem-solving method
on a generic computer, thereby using the computer as a tool to perform the
abstract idea. For the above reasons, we determine that the claim is directed
towards the abstract idea.
We again look to the analysis set forth in Gottschalk v. Benson. The
Court in Benson found that the claimed mathematical procedures “can be
carried out in existing computers long in use [or] without a computer.” 409
Appeal 2019-001431
Application 13/761,256

12
U.S. at 67. The Court found that, despite the involvement of the computer in
carrying out the calculations, the practical result of the claim would be a
patent on claimed mathematical conversion itself. Id. at 71–72. Other court
cases have also found that increasing the speed of a process, where these
purported improvements come solely from the capabilities of a general-
purpose computer, are not sufficient to show an improvement in computer
functionality. FairWarning IP, LLC v. Iatric Sys., 839 F.3d 1089, 1095
(Fed. Cir. 2016); Credit Acceptance Corp. v. Westlake Services, 859 F.3d
1044, 1055 (Fed. Cir. 2017).
We have considered Appellant’s invocation of Enfish. Enfish
addressed claims to a “self-referential” database, which was contrasted with
“the more standard ‘relational’” database. Enfish, 822 F.3d at 1330. Like
Appellant’s invention, Enfish provided “all of the information about
documents, persons, and companies are stored in a single table,” and this
allowed for faster searching of data than would be possible with the
relational model. Id. at 1332-33.
However, the reasons why the claims at issue in Enfish were eligible
do not apply here. The Enfish court held that those claims “are directed to a
specific improvement to the way computers operate, embodied in the self-
referential table.” Id. at 1336. Enfish’s eligible claim 17 included a “means
for configuring said memory according to a logical table.” Id. The court
construed the “means for configuring” language as requiring a four-step
algorithm describing the relationship between rows and columns. Id. An
additional advantage of Enfish’s eligible claim was that the “database of the
present invention does not require a programmer to preconfigure a structure
to which a user must adapt data entry.” Id. Unlike the eligible claim in
Appeal 2019-001431
Application 13/761,256

13
Enfish, Appellant’s claim 1 does not recite a particular computer structure,
but rather, recites operations that may be taken (including outside the
computer realm) to produce serial multiplicative operations. These
operations, preconfigured prior to processing on the computer, do not
provide a database that, like Enfish’s database, can be “configured on-the-
fly.” Furthermore, Appellant’s claim 1 does not exhibit limitations of the
same character as Enfish’s specific, four-part algorithm for configuring the
self-referential properties. Instead, claim 1’s exhortation to “construct[]”
equivalent sets, absent the details of such construction, provides at best
“generalized steps to be performed on a computer using conventional
computer activity.” Id. at 1338 (citing Internet Patents Corp. v. Active
Network, Inc., 790 F.3d 1343, 1348–49 (Fed. Cir. 2015) (described by the
Enfish court as “claims directed to abstract idea of maintaining computer
state without recitation of specific activity used to generate that result”).
Consequently, we are not persuaded that Enfish guides us to a determination
of eligibility for claim 1.
Based upon our controlling guidance and court precedent, we
determine that claim 1 is directed towards the recited abstract idea, and that
the recited abstract idea is not integrated into a practical application of that
idea.
c) Significantly More than the Abstract Idea
Having determined that claim 1 is directed to an abstract idea, we next
determine, under Step 2B of the 2019 Guidance, whether the claims amount
to significantly more than the abstract idea itself. 2019 Guidance, 84 Fed.
Reg. at 56. A determination that the claims are significantly more may be
Appeal 2019-001431
Application 13/761,256

14
indicated where additional limitations, either alone or in combination, are
not well-understood, routine, conventional activity in the field. Id.
The Examiner finds the additional elements to be “generic computer
structure that serves to perform generic computer functions known to the
pertinent industry.” Ans. 5. The Examiner further finds that when all of the
limitations are taken together as an ordered combination, their “collective
functions merely provide conventional computer implementation.” Id.
Appellant has not specifically traversed the Examiner’s finding that
the combination of elements merely provides conventional computer
implementation, with the use of known computer functions. See Reply Br.
2–4.
In the absence of argument to the contrary, we are not persuaded that
the Examiner erred in finding the additional limitations, taken alone or as an
ordered combination, to be well-understood, routine, conventional activity.
Review of the Appellant’s Specification supports the Examiner’s finding.
Appellant’s computer system may comprise “hardware components,
firmware components,” or “a programmable logic array or application-
specific integrated circuit.” Spec. ¶¶ 75–77. The claimed method may “be
carried out fully or partially in software running on one or more processors
(not shown in the figures).” Id. ¶ 78. The claimed instructions “can be
written in a number of programming languages for use with many computer
architectures or operating systems,” and may be stored “using any memory
technology, present or future.” Id. ¶ 80.
Furthermore, the use of a computer for the function of performing
repetitive calculations has been recognized by the courts as well-understood,
routine, conventional activity. Parker v. Flook, 437 U.S. 584, 594 (1978)
Appeal 2019-001431
Application 13/761,256

15
(recomputing or readjusting alarm limit values); Bancorp Servs. v. Sun
Life, 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“The computer required by some
of Bancorp’s claims is employed only for its most basic function, the
performance of repetitive calculations, and as such does not impose
meaningful limits on the scope of those claims.”). Consequently, we agree
with the Examiner’s determination that the claims do not provide
significantly more than the identified abstract idea.
d) Summary
In view of the foregoing, under the 2019 Guidance, informed by our
governing case law concerning 35 U.S.C. § 101, Appellant has not shown
the Examiner erred in concluding claim 1 is directed to a judicial exception,
i.e., an abstract idea, without significantly more. We therefore affirm the
Examiner’s rejection of claim 1. Because Appellant argues claims 2–7, 9–
17, and 19 on the same grounds as claim 1, we also affirm the Examiner’s
rejection of claims 2–7, 9–17, and 19. 37 C.F.R. 41.37(c)(1)(iv).
B. Obviousness
We have reviewed the Examiner’s obviousness rejections (Final Act.
4–8) in light of Appellant’s contentions that the Examiner has erred (Appeal
Br. 4–9). We have also reviewed the discussion of the obviousness
rejections in the Examiner’s Answer (Ans. 6–9) and the Reply Brief (Reply
Br. 4–10). We are persuaded by Appellant’s contention of Examiner error in
rejecting claims 1–7, 9–17, and 19 under 35 U.S.C. § 103. We begin with
claim 1.
Appeal 2019-001431
Application 13/761,256

16
a) “relational logical operation”
Appellant first contends that the rejection of claim 1 is defective
because Graefe and Kneisel do not teach or suggest the following limitations
of claim 1:
identifying a first relational data table operating using a
relational logical operation on a second relational data table in
the instruction code, the relational logical operation comprising
at least multiplication,
and
constructing one or more equivalent sets of serialized
instructions comprising serial logical operations equivalent to
the relational logical operation operating on one or more of
the identified sets of decision variables.
Appeal Br. 4.
The Examiner finds Graefe to teach the above-disputed limitations,
with the exception of the relational logical operation comprising at least
multiplication. Final Act. 4. The Examiner finds Graefe’s “Select”
statement to be a table operating on another table, thereby teaching or
suggesting the “identifying” limitation. Id. (citing Graefe ¶ 30). The
Examiner finds Graefe’s “Select” statement to identify tables, such as
“Phones” and “Children,” and then to use operators such as “FROM, AS,
[and] FOR” to operate on the tables. Ans. 6 (citing Graefe ¶¶ 30, 32, 33).
The Examiner further finds the Specification to define “relational logical
operation,” and that the portions of the Specification relied upon by the
Appellant describe nothing more than the type of operations described by
Graefe. Ans. 7 (citing Appellant’s reference to Spec. ¶¶ 8 and 50, and step
402 illustrated in Fig. 4, at Appeal Br. 2). The Examiner additionally finds
Graefe’s “equivalence rewrite transformations” to transform execution
Appeal 2019-001431
Application 13/761,256

17
statements, and thereby teach or suggest the “constructing” limitation. Final
Act. 5 (citing ¶ 60).
Appellant argues that Graefe’s “Select” statement does not teach the
claimed “relational logical operation.” Appeal Br. 4. Appellant
characterizes Graefe’s “Select” statement as using the Phones, Children, and
Contacts tables to produce an XML document having specific data from
each table. Id. at 6–7. Appellant argues that the “Select” statement “simply
specifies information to be searched for and retrieved from a database using
a query including an XML aggregator nested within another XML
aggregator, and is completely unrelated to any type of ‘relational logical
operation’ performed by one relational data table on another relational data
table.” Id. at 8.
When determining patentability of an invention over the prior art,
such as in an obviousness inquiry, all claim limitations must be
considered. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983); see also In
re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“All words in a claim must
be considered in judging the patentability of that claim against the prior
art”).
We are not persuaded by Appellant that Graefe fails to teach or
suggest the claimed “relational logical operation.” Appeal Br. 8. The
Examiner has pointed to Graefe’s operators, such as “FROM,” as indicating
a relational logical operation. Ans. 6. Graefe refers to “FROM” as used “to
aggregate data from a row set into a complex scalar . . . when formatting
relational data as XML data (e.g., SELECT Contacts.* From Contacts For
XML).” Graefe ¶ 14. Graefe further discusses the actions of Apply
operators 48 and 50 performing a correlated join of data from more than one
Appeal 2019-001431
Application 13/761,256

18
table into a single result table. In view of the Examiner’s explanation,
supported by Graefe, Appellant has not persuaded us that Graefe fails to
teach or suggest a “relational logical operation” as set forth in claim 1.
b) Combination of Graefe and Kneisel
Appellant next contends that the Examiner has not provided an
acceptable rationale for combining Graefe and Kneisel, or a sensible
explanation of how Graefe would be modified by Kneisel to result in the
claimed invention. Appeal Br. at 9.
The Examiner finds Kneisel to teach or suggest using mathematical
expressions in command statements. Final Act. 4 (citing Kneisel ¶¶ 39,
128). The Examiner finds that one having ordinary skill in the art would
have been motivated to modify Graefe with Kneisel “in order to execute a
particular command with particular parameters.” Final Act. 5. The
Examiner further finds, “[p]rogramming languages are often used
interchangeably in the industry where certain languages are translated into
other languages.” The Examiner further explains that the “combination of
the references provide for transforming database statements, which include
mathematical statements such as multiplication, into a particular format.”
Ans. 8, 9.
Appellant argues that Graefe is directed to “formatting a relational
row set as XML data” by “using a query including an XML aggregator
nested within another XML aggregator.” Appeal Br. 5–8 (citing Graefe
¶ 30). Appellant further argues that one skilled in the art would not have
been motivated to “incorporate the COBOL mathematical expressions
disclosed by Kneisel into a database query [including an XML aggregator]
such as that disclosed by Graefe as suggested by the Examiner [because
Appeal 2019-001431
Application 13/761,256

19
s]uch a modification is nonsensical and completely unsupported by either
Graefe, Kneisel, or the Examiner’s motivation to combine.” Appeal Br. 8, 9.
Obviousness can be established by combining or modifying the
teachings of the prior art to produce the claimed invention where there is
some teaching, suggestion, or motivation to do so. In re Kahn, 441 F.3d
977, 986 (Fed. Cir. 2006). Where there is a reason to modify or combine the
prior art to achieve the claimed invention, the claims may be rejected
as obvious provided there is also a reasonable expectation of success. In re
Merck & Co., Inc., 800 F.2d 1091(Fed. Cir. 1986).
We are persuaded by Appellant that the Examiner has not shown an
articulated reason with a rational underpinning to combine the references to
teach or suggest the claimed invention. As a reason to combine, the
Examiner states that the combination would result in the ability to “execute a
particular command with particular parameters.” Final Act. 5. The
Examiner further states that the combination would “provide for
transforming database statements, which include mathematical statements
such as multiplication, into a particular format.” Ans. 9.
However, the Examiner has not explained how identifying
mathematical expressions, such as existing in the command statements of
Kneisel, would have advantageously modified Graefe. The Examiner has
stated further that programming languages are often used interchangeably,
having code in one language embedded in code of another language, and that
accordingly, the use of XML in Graefe and COBOL in Kneisel “does not
invalidate reasons to combine.” Ans. 8. However, the statements of the
Examiner merely explain the intended outcome of the combination.
Although the combination may result in transforming database statements
Appeal 2019-001431
Application 13/761,256

20
into a particular format, the Examiner has not explained why that would
have been desirable. Furthermore, the ability to “execute a particular
command with particular parameters” is an ability that Graefe already
possesses. The Examiner’s statements do not explain why incorporating
multiplication into the process of Graefe would have been advantageous to
Graefe in any particular manner. Nor has the Examiner articulated any other
reason to combine the relied-upon teachings or suggestions of Graefe and
Kneisel to result in the claimed invention. Accordingly, we are persuaded
by Appellant that the Examiner has not set forth an acceptable reason to
combine Graefe and Kneisel.
Additionally, we are persuaded by Appellant that the Examiner has
not explained how the combination would have been achieved with a
reasonable expectation of success. The Examiner combines Graefe’s
performing a correlated join of data from more than one table into a single
result table with Kneisel’s use of multiplication in command statements.
However, the Examiner does not explain how those disparate actions would
be combined to result in the claimed invention. Specifically, the Examiner
does not explain how Graefe’s particular table-joining operation would be
combined with Kneisel’s particular multiplication operation to arrive at the
claimed invention with a reasonable expectation of success.
For the above-mentioned reasons, we are persuaded that the Examiner
has not shown that the combination of Graefe and Kneisel teaches or
suggests the invention of claim 1. Because the rejection of claims 2–7, 11–
17, and 19 rely on the same combination, we are also persuaded that the
Examiner has not shown that the combination of Graefe and Kneisel teaches
or suggests the invention of claims 2–7, 11–17, and 19. For those reasons,
Appeal 2019-001431
Application 13/761,256

21
and because the Examiner has not shown Boswell to provide the missing
teachings or suggestions, we are also persuaded that the Examiner has not
shown that the combination of Graefe, Kneisel, and Boswell teaches or
suggests the invention of claims 9 and 10.

CONCLUSION
For the above-described reasons, we reverse the Examiner’s rejection
of claims 1–7, 11–17, and 19 as being obvious over the combination of
Graefe and Kneisel, and the Examiner’s rejection of claims 9 and 10 as
being obvious over the combination of Graefe, Kneisel, and Boswell. We
affirm the Examiner’s rejection of claims 1–7, 9–17, and 19 as lacking
subject matter eligibility under 35 U.S.C. § 101.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § References/Grounds Affirmed Reversed
1–7, 9–
17, 19
101 Eligibility 1–7, 9–17,
19

1–7, 11–
17, 19
103 Graefe, Kneisel 1–7, 11–
17, 19
9, 10 103 Graefe, Kneisel,
Boswell
9, 10
Overall
Outcome
1–7, 9–17,
19

Appeal 2019-001431
Application 13/761,256

22

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED