ODENHEIMER, Jens et al.

Patent Trials and Appeals Board

Dec 31, 2020

2019004216 (P.T.A.B. Dec. 31, 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.
13/783,763 03/04/2013 Jens ODENHEIMER 1933.2500000 7599
82515 7590 12/31/2020
Sterne, Kessler, Goldstein & Fox P.L.L.C.
1100 New York Avenue, N.W.
Washington, DC 20005
EXAMINER
OHBA, MELLISSA M
ART UNIT PAPER NUMBER
2164
NOTIFICATION DATE DELIVERY MODE
12/31/2020 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):
e-office@sternekessler.com
jasong@sternekessler.com
mlee@sternekessler.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JENS ODENHEIMER and MARKUS BOEHM
Appeal 2019-004216
Application 13/783,763
Technology Center 2100
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, 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 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as SAP
SE. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The claims are directed to data replication for cloud-based in-memory
databases. Appellant’s Specification summarizes the claimed invention:
According to example embodiments, a database offered as a
service, e.g. a cloud based database, may be replicated using a
suggested approach which is optimal for a customer by taking a
customer’s particular database system architecture into
consideration. As an example, a customer need not replicate
using a cloud-based replication technology if an on premise
option is available to the customer. A replication topology may
be automatically suggested and instantiated based on an optimal
methodology which may be most efficient for a customer.
Therefore, a replication technology need not be “hard-wired” to
a database, and a customer may use an optimized replication
technology which could provide a best performance and/or price
for the customer. Depending on what is determined to be best
for a customer, a cloud-based in-memory database may be
replicated using a customer’s on premise replication technology
or a cloud-based in-memory database may be replicated using a
cloud based replication technology.
Spec. ¶ 11–12. Claim 1, reproduced below, is illustrative of the claimed
subject matter.
1. A method comprising:
receiving, by a first computing device, a request to
configure an on-demand cloud-based in-memory database,
wherein the on-demand cloud-based in-memory database is
provided by a second computing device, and wherein the on-
demand cloud-based in-memory database is configured to
replicate data of a database operating on the first computing
device;
determining, at the first computing device, features
comprising identification information that identifies database
system software operating on the first computing device, wherein
the identification information is independent of the data to be
replicated;
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transmitting, from the first computing device, the
identification information to the second computing device,
wherein the second computing device is configured to evaluate
the identification information against compatibility information
of a replication rule set to generate a recommendation indicating
replication technology, selected from a plurality of available
replication technologies identified by the second computing
device, used to replicate the data from the first computing device
to the on-demand cloud-based in-memory database;
receiving, at the first computing device, the
recommendation from the second computing device; and
configuring, by the first computing device, the database
system software operating on the first computing device to use
the replication technology indicated by the recommendation, to
replicate the data of the database operating on the first computing
device to the on-demand cloud-based in-memory database
provided by the second computing device.
Appeal Br. 23 (Claims Appendix).
REFERENCES2
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Farrar US 8,260,761 B2 Sept. 8, 2012
Agarwal US 2012/0281706 Al Nov. 8, 2012
Purser US 8,327,029 B1 Dec. 4, 2012
Anglin US 8,838,529 B2 Sept. 16, 2014

2 All citations herein to the references are by the first named inventor/author
only.
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REJECTIONS
Claims 1–21 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. Non-Final
Act. 3.
Claims 1, 2, 5, 6, 8, 9, 12, 13, 15, 16, 19, and 21 stand rejected under
35 U.S.C. § 103 as being unpatentable over Anglin, Farrar, and Purser.
Non-Final Act. 4–24.
Claims 3, 4, 7, 10, 11, 14, 17, 18, and 20 stand rejected under
35 U.S.C. § 103 as being unpatentable over Anglin, Farrar, Purser, and
Agarwal. Non-Final Act. 24–28.
ISSUES
First Issue: Has the Examiner erred in finding the limitation “wherein
the identification information is independent of the data to be replicated,”
lacks written description support in Appellant’s Specification?
Second Issue: Has the Examiner sufficiently shown that Pursar is
analogous art to Appellant’s claimed invention?
ANALYSIS
First Issue
Claim 1 recites the limitation “wherein the identification information
is independent of the data to be replicated.” Appeal Br. 23 (Claims
Appendix). The Examiner rejects claim 1 for lack of written description of
this “wherein” clause. Non-Final Act. 3. Specifically, the Examiner finds
that this limitation lacks support in the Specification because “the office
cannot find where it is explicitly recited that the identification information is
independent of the data to be replicated.” Non-Final Act. 3.
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Appellant argues that the Examiner errs in requiring in haec verba
support for the written description. Id. Appellant argues that the
Specification in paragraphs 14, 17, and 19 “contain tables showing twenty-
one (21) non-limiting examples of information that is independent of data to
be replicated.” Appeal Br. 11. Appellant additionally argues:
[T]he as-filed specification discloses identification information
including information such as “Computer Hostname,”
“Computer Network Address” or “IP address,” “Replication
Technology Hostname,” “Replication Technology Network
Address,” etc. (As-Filed Specification ¶¶ [0014]-[0015].) This
is identifying information that may pertain to systems and
software of database systems that store data, rather than to the
data that would be stored or replicated on those systems, as a
POSA would readily have recognized. Because of this, the
identifying information would stay the same for a given instance
of database system software, regardless of whatever other data
may be present in a corresponding system. Therefore, the
Specification, by way of multiple non-limiting examples, more
than adequately discloses that “the identification information is
independent of the data to be replicated,” as claimed.
Appeal Br. 11.
In order to satisfy the written description requirement, the disclosure
must convey with reasonable clarity to those skilled in the art that the
inventor was in possession of the invention. Purdue Pharma L.P. v.
Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000).
Here, the Examiner does not dispute that the examples identified by
Appellant could be used as “identification information.” The problem,
according to the Examiner, is that the Specification never explicitly states or
shows that the examples are independent of the data to be replicated. Ans. 6.
Here, we agree with Appellant that a person of ordinary skill in the art
would have understood that paragraphs 14, 15, 17, and 19 of the
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Specification support the recited limitation “the identification information is
independent of the data to be replicated.” In particular, paragraph 17
discloses that an assessment agent and an evaluation engine together
determine whether to use cloud-based data replication technologies or on-
site data replication technologies. The disclosures in these paragraphs taken
together, convey to a person of ordinary skill in the art that the inventor
possessed “the identification information is independent of the data to be
replicated.”
We agree with Appellant’s arguments that the Specification’s
disclosure provides examples of information that is independent of data to be
replicated and demonstrate Appellant possessed the disputed limitation. We,
therefore, do not sustain the rejection under 35 U.S.C. § 112(a).
Second Issue
This issue turns on whether Purser, relied upon by the Examiner in
each of the rejections under 35 U.S.C. § 103(a), is analogous art to
Appellant's claimed invention. We agree with Appellant that it is not.
In rejecting claim 1, the Examiner relies primarily on Anglin, finding
that it teaches all of the limitations, except the limitations “identification
information is independent of the data to be replicated” and “generate a
recommendation indicating replication technology, selected from a plurality
of available replication technologies.” Non-Final Act. 7, 8. To cure these
deficiencies, the Examiner cites Farrar as teaching the recited “identification
information is independent of the data to be replicated”, and Purser as
teaching “generate a recommendation indicating replication technology,
selected from a plurality of available replication technologies.” Non-Final
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Act. 8. The Examiner finds both Purser and Anglin copy information
between two or more devices are therefore they are analogous art. Ans. 11.
Appellant argues the Examiner’s finding that Anglin and Purser are
from the same art of replicating information “lacks support from any factual
evidence or rational argument.” Appeal Br. 18. Appellant argues Purser
does not contemplate database replication, and contends:
[T]he Examiner still has failed to offer any coherent rationale for
how Purser’s audio/video stream synchronization has any
relevance to database replication, let alone how Purser could
suggest to “generate a recommendation indicating replication
technology, selected from a plurality of available replication
technologies identified by the second computing device” as the
claims recite-because Purser has no such description, the Office
need not even consider whether or not Purser is analogous art (it
is not). Any mention of a “recommendation” from Purser is thus
completely out of context.
Appeal Br. 18–19. Appellant further contends:
While there is not a single mention of replication, nor of
databases other than as generic storage (Purser 8:40–44, 12:40–
43, 21: 19–23), it is also readily apparent on the face of Purser
that the mentioned “synchronization” only has to do with timing
of data streams, e.g., audio and video streams. (E.g., Purser 1;
14–23 (“a video camera recording images ... a microphone
recording audio data ... it may be desirable to synchronize the
microphone so that the precise event described in one or more
pictures can be correlated to the sound that the event
generated.”); id 5:2–16 (“triggering signals ... clock signals ...
sample rate ... other factors that may be relevant to
synchronization ... data streams 120, 140, 160, 170 are aligned
so that a point corresponding to time t1 occurs at the same point
in each of the data arrays ... “).) This “synchronization” is wholly
unrelated to “replication.”
Appeal Br. 19. Appellant further argues Pursar fails to satisfy the either of
the two tests required to qualify as analogous art:
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A reference is analogous art to the claimed invention if: (1) the
reference is from the same field of endeavor as the claimed
invention (even if it addresses a different problem); or (2) the
reference is reasonably pertinent to the problem faced by the
inventor (even if it is not in the same field of endeavor as the
claimed invention)." Id; see also In re Bigio, 381 F.3d 1320,
1325 (Fed. Cir. 2004). The discussion of Purser above shows that
Purser fails both of these criteria of analogous art set forth in the
MPEP. Specifically, industrial automation, measurement
instrumentation, and audio/video synchronization primarily
shown to be Purser's field of endeavor (Purser, I :7–38), bear no
relation to the instant claims, all of which instead address issues
of software compatibility in database replication. Along similar
lines, neither Purser nor Appellant contemplates the same
problems across these disparate fields of endeavor. Accordingly,
Purser is non-analogous art, and obviousness rejections based on
any combination of Anglin in view of Purser should be
withdrawn.
Appeal Br. 19–20.
“References within the statutory terms of 35 U.S.C. § 102 qualify as
prior art for an obviousness determination only when analogous to the
claimed invention.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)
(citing In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992)). A reference is
analogous art if its satisfies one of two separate prongs of the analogous art
test: (1) the art is from the same field of endeavor, regardless of the problem
addressed and, (2) if the reference is not within the field of the inventor's
endeavor, the reference still is reasonably pertinent to the particular problem
with which the inventor is involved. Id. (citing In re Deminski, 796 F.2d
436, 442 (Fed. Cir. 1986) and In re Wood, 599 F.2d 1032, 1036 (CCPA
1979)).
We first note that the Examiner has not correctly applied the
analogous art test because the Examiner compares the subject matter of the
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two references being combined. That is, the Examiner determines that
Purser is analogous art because both Purser and Anglin copy information
between two or more devices are therefore they are analogous art. Ans. 11.
The correct comparison is that of the prior art reference to the claimed
invention. The Federal Circuit has made clear that the “test for analogous
art requires the PTO to determine the appropriate field of endeavor by
reference to explanations of the invention's subject matter in the patent
application, including the embodiments, function, and structure of the
claimed invention.” Bigio, 381 F.3d at 1325–26 (citation omitted) (emphasis
added); see also Donner Tech., LLC v. Pro Stage Gear, LLC, 979 F.3d 1353
(Fed. Cir. 2020) (“Thus, when addressing whether a reference is analogous
art with respect to a claimed invention under a reasonable-pertinence theory,
the problems to which both relate must be identified and compared.”). Here,
the Examiner’s finding that Purser is analogous art does not identify
Appellant’s field of endeavor, nor does it identify the problems faced by the
inventor. Donner Tech., 979 F.3d 1353 (finding error where “Board also
failed to properly identify and compare the purposes or problems to which
[the prior art] and the [subject invention] relate”).
Applying the analogous art test in accordance with the guidance of
our reviewing court, we find Appellant’s argument persuasive. Appellant’s
Specification describes the invention as being related to “data replication of
cloud-based in-memory database systems.” Spec. ¶ 9 (“Provided herein are
system, method, and/or computer program product embodiments . . . for data
replication for cloud based in-memory databases.”). We find this
description aptly characterizes the relevant field of endeavor. Thus, in order
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for Purser to qualify as prior art under the first prong, Purser must be from
the field of data replication technologies.
Purser is not concerned with data replication of cloud-based in-
memory database systems, or database replication systems more generally.
Rather, Purser is directed to a technique for “selecting a strategy for
synchronizing two data streams or two hardware devices” (Purser Abstract),
such as by synchronizing “the images recorded by the camera with the audio
recorded by the microphone so that the precise event described in one or
more pictures can be correlated to the sound that the event generated.”
Purser col. 1, ll. 18–20. The purported field of endeavor identified by the
Examiner—copying information between two or more devices—is
untethered to the description set forth in Appellant’s Specification, and is,
therefore, erroneous as a basis for finding that Purser is analogous art under
the first prong. The Examiner based the analogous art determination on an
erroneous determination of the applicable field of endeavor. Because
Appellant’s field of endeavor is data replication of cloud-based in-memory
database systems, and because Purser does not relate to data replication of
cloud-based in-memory database systems, Purser is not in the same field of
endeavor as Appellant’s invention.
Although not in the same field of endeavor, Purser may still qualify as
analogous art if reasonably pertinent to the problems faced by the inventor.
Bigio, 381 F.3d at 1325. Appellant’s Specification describes the problems in
the prior art as relating to issues that arise from the transition of database
storage from local storage to remote and cloud-based databases. See
Spec. ¶¶ 1–12. On the other hand, Purser describes the problems in the art
as relating to the need to match up the timing of data streams emerging from
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disparate hardware devices in order to provide useful data for analysis or
consumption. Purser col. 1, ll. 7–38.
The Examiner finds that Purser is reasonably pertinent because Purser
“discloses synchronizing the information between [two] devices” and
“[s]ynchronization is making sure the information between the two devices
is the same[,] and if not[,] then copying or reproducing the information in
order for both devices to be in synch.” Ans. 11–12. The Examiner finds
that based on these teachings of Purser, it would have been obvious to
“generate a recommendation indicating replication technology, selected
from a plurality of available replication technologies.” Non-Final Act. 8.
However, the Examiner does not identify either the problem faced by the
inventor or the problem addressed by Purser. Nor does the Examiner
explain the problem of Purser’s problem would have logically commended
itself to issues of database replication faced by Appellant.
The fact that Appellant’s claims address the problem of efficient
database replication in cloud-based systems by generating a
recommendation of a selected replication technology does not mean that the
problem itself relates to selecting a recommendation out of several options.
That is, how Appellant’s invention solves the problem is not the measuring
stick for analogous art. The Federal Circuit has held that “[t]he pertinence
of the reference as a source of solution to the inventor's problem must be
recognizable with the foresight of a person of ordinary skill, not with the
hindsight of the inventor's successful achievement.” Sci. Plastic Prods., Inc.
v. Biotage AB, 766 F.3d 1355, 1359 (Fed. Cir. 2014).
Here, it is only through the lens of Appellant's claimed solution, that a
person of ordinary skill in the art would have turned to Purser's use of
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recommending an option out of many possible options to address problems
database replication technology. Accordingly, we agree with Appellant that
Purser is not reasonably pertinent to the particular problem faced by the
inventors, and it does not qualify as analogous art for purposes of
obviousness. We do not sustain the rejection of independent claims 1, 8, 15,
and 21 under 35 U.S.C. § 103(a).
Remaining Claims
The remaining claims rejected are dependent from independent
claims 1, 8, and 15. Because we have reversed these independent claims, we
also reverse all claims that depend therefrom as dependent claims stand with
their respective independent claims.
CONCLUSION
We reverse the Examiner’s decision to reject the claims.
DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–21 112(a) Written description 1–21
1, 2, 5, 6, 8,
9, 12, 13,
15, 16, 19,
21
103 Anglin, Farrar,
Purser
1, 2, 5, 6, 8,
9, 12, 13,
15, 16, 19,
21
3, 4, 7, 10,
11, 14, 17,
18, 20
103 Anglin, Farrar,
Purser, Agarwal
3, 4, 7, 10,
11, 14, 17,
18, 20
Overall
Outcome
1–21

REVERSED