Ex Parte Anderson

Patent Trials and Appeals Board

Apr 24, 2019

13677991 - (D) (P.T.A.B. Apr. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/677,991 11/15/2012 Arlen Anderson
109675 7590 04/26/2019
OCCHIUTI & ROHLICEK LLP
321 SUMMER STREET
BOSTON, MA 02210
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.
30040-A03001 3398
EXAMINER
GURMU, MULUEMEBET
ART UNIT PAPER NUMBER
2163
NOTIFICATION DATE DELIVERY MODE
04/26/2019 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):
INFO@ORPATENT.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARLEN ANDERSON
Appeal2017-007669
Application 13/677 ,991
Technology Center 2100
Before JOSEPH L. DIXON, JAMES W. DEJMEK, and
STEPHEN E. BELISLE, Administrative Patent Judges.
BELISLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 appeals under 35 U.S.C. § 134(a) from a Non-Final
Rejection2 of all pending claims, namely, claims 1--40. App. Br. 1. An oral
hearing was held on April 18, 2019. A transcript of the hearing will be
placed in the record in due course. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We reverse.
1 Appellant identifies AB INITIO TECHNOLOGY LLC as the real party
in interest. App. Br. 1.
2 The claims at issue have been rejected three times. App. Br. 1.
Appeal2017-007669
Application 13/677,991
STATEMENT OF THE CASE
The Claimed Invention
Appellant's invention generally relates to "data clustering,
segmentation, and parallelization." Spec. 1 :8.
Appellant argues patentability of claims 1--40 using two separate
groups of claims as follows:
Group I: Claims 1-6, 12-26, 28, and 29; and
Group II: Claims 7-11, 27, and 30--40. App. Br. 9, 12.
For each of Groups I and II, Appellant argues the grouped claims together as
a set. See App. Br. 9, 12. Like Appellant, we select claims 1 and 30 as
illustrative of the claims in Groups I and II, respectively.
Claim 1, reproduced below, is illustrative of the claimed subject
matter on appeal of Group I:
1. A method, including:
processing a first set of original records by a first processing
entity to generate a second set of records that includes the
original records and one or more copies of each original
record, each original record including one or more fields,
and the processing of each of at least some of the original
records including
generating at least one copy of the original record, and
associating a first segment value with the original record
and associating a second segment value with the
copy, where the first segment value corresponds to
a first portion of one or more data values of
respective fields of the original record and the
second segment value correspond to a second
portion of the one or more data values of the
respective fields of the original record, and where
the second portion is different from the first portion,
and
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Application 13/677,991
partitioning the second set of records among a plurality of
recipient processing entities based on the segment values
associated with the records in the second set, and, at each
recipient processing entity, performing an operation based
on one or more data values of the records received at the
recipient processing entity to generate results.
App. Br. 13 (Claims Appendix).
Claim 30, reproduced below, is illustrative of the claimed subject
matter on appeal of Group II:
30. A method, including:
partitioning a set of records by a first processing entity into
multiple subsets of records; and
processing different subsets of the set of records by different
respective recipient processing entities and storing results
in data storage accessible to each of the recipient
processing entities, the processing by each recipient
processing entity including
performing an operation on at least one record in the
subset based on determining whether or not there is
an approximate match between one or more values
of one or more fields of the record and an entry
within local reference information maintained by
the recipient processing entity, and performing an
operation on at least one record in the subset based
on determining whether or not there is an
approximate match between one or more values of
one or more fields of the record and an entry within
the data storage that was provided by any of the
other recipient processing entities, and
updating the data storage based on the local reference
information maintained by the recipient processing
entity.
App. Br. 19-20 (Claims Appendix).
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Application 13/677,991
References
The Examiner relies on the following references as evidence of
unpatentability of the claims on appeal:
Hansen
Alonso
N evidomski
Marshall
Dean
Floyd
US 2003/0065958 Al
US 2004/0210819 Al
US 2006/0004744 Al
US 2008/0228802 Al
US 8,175,875 Bl
US 8,463,742 Bl
Rejections
Apr. 3, 2003
Oct. 21, 2004
Jan. 5,2006
Sept. 18, 2008
May 8, 2012
June 11, 2013
The Examiner made the following rejections of the claims on appeal:
Claims 1-3, 5, 6, 12-25, 28, and 29 stand rejected under pre-AIA
35 U.S.C. § I03(a) as obvious over Marshall, Dean, and Floyd.
Claim 4 stands rejected under pre-AIA 35 U.S.C. § I03(a) as being
obvious over Marshall, Dean, Floyd, and Alonso.
Claims 7-11, 27, and 30-40 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as being obvious over Marshall, Dean, Floyd, and Nevidomski.
Claim 26 stands rejected under pre-AIA 35 U.S.C. § I03(a) as being
obvious over Marshall, Dean, Floyd, and Hansen.
ANALYSIS 3
Group I: Claims 1-6, 12-26, 28, and 29 (Claim 1)
Appellant argues the Examiner failed to articulate any reason with
rational underpinning for combining Marshall, Dean, and Floyd to arrive at
3 Throughout this Decision, we have considered Appellant's Appeal Brief
filed August 9, 2016 ("App. Br."); Appellant's Reply Brief filed April 24,
2017; the Examiner's Answer mailed February 24, 2017 ("Ans."); the Non-
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Application 13/677,991
the invention of claim 1. See App. Br. 8-11. In particular, Appellant
argues: "The sole justification provided in each case was the bald conclusory
statement that the combination would make the databases system 'more
efficient.' This empty assertion is not sufficient." App. Br. 9. As for Dean,
Appellant argues Marshall already discloses a technique to "maintain
and/or improve the efficiency of [a] database system," and Dean's indexing
of documents as compressed sequences of tokens "would not have made the
database system of Marshall more efficient." App. Br. 10 ("The Office
Action offers no explanation for how to make these two very different
indexing techniques work together at all."). As for Floyd, Appellant argues
Floyd's "index is managed such that the size of the index does not exceed a
predetermined maximum size," and "one of ordinary skill in the art would
have seen such index size restriction as most likely to interfere with such a
combination of the index rebuilding of Marshall and the cluster-based
indexing of Dean." App. Br. 11. Appellant concludes "even if somehow the
hypothetical combination of Marshall and Dean did achieve efficiency
improvement, the combination of Floyd would again most likely undermine
that efficiency, not improve it ( e.g., by interfering with the rebuilding steps,
or the clustering steps, or both)." App. Br. 11.
The U.S. Supreme Court has held the relevant inquiry in an
obviousness analysis is whether the Examiner has set forth "some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with
approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007)). Here,
Final Office Action mailed January 14, 2016 ("Final Act."); and Appellant's
Specification filed November 15, 2012 ("Spec.").
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the Examiner's originally stated motivation to combine each of Dean and
Floyd with Marshall is, without more, "to make the database system more
efficient." Final Act. 4--5. In the Answer, in response to Appellant's
challenge to this stated motivation, the Examiner states a skilled artisan
would have combined (1) Marshall and Dean "to eliminate difficulty in
finding the optimal threshold degree of duplication for a document," and (2)
Floyd with Marshall and Dean to "reduc[e] the amount of storage capacity
that is needed to store received data." Ans. 3--4. The Examiner then
concludes again: "Overall the combination of Marshall together with Dean
and Floyd increases efficiency in storage management." Ans. 4.
In addition to arguing the Examiner did not address Appellant's
argument that Dean would undermine (not improve) Marshall's "efficiency,"
Appellant responds:
Fundamentally, the Examiner offers no explanation for what a
desire to eliminate difficulty in "finding the optimal threshold
degree of duplication for a document" has to do with the
proposed modification of Marshall ( which is simply a direct
quote from Appellant's claim 1). Simply quoting from the
Appellant's own claim and quoting irrelevant text from cited
references with no other explanation cannot be considered to
satisfy KSR's requirement of "articulated reasoning with some
rational underpinning to support the legal conclusion of
obviousness."
Reply Br. 7. As for the Examiner's stated motivation for combining Floyd
with Marshall and Dean, namely, reducing storage needs, Appellant
responds:
On its face, this modification appears to actually require storage
of additional information, i.e., the information that actually
associates different segment values with different records. The
Examiner has made no effort to explain why having to store
additional information would actually reduce the amount of
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storage needed to store received data. To the contrary, one of
ordinary skill in the art would have understood that storing yet
more information on top of the data that has to be stored would
just require more, not less, storage space.
Reply Br. 8.
We find Appellant's arguments persuasive, and that the Examiner's
stated reasoning for combining references here is conclusory. See Final
Act. 2-5; Ans. 2--4. Although the Examiner articulates "reasons" ( e.g.,
"efficiency") for combining Marshall, Dean, and Floyd, missing is the
rational underpinning for those reasons. For example, the Examiner does
not provide sufficient evidence or technical reasoning as to (1) why a desire
to eliminate difficulty in finding the optimal threshold degree of duplication
for a document would motivate a skilled artisan to combine Dean with
Marshall; and (2) why a desire to reduce an amount of storage capacity
needed to store received data would motivate a skilled artisan to combine
Floyd with Dean and Marshall, particularly where doing so would appear to
require storage of more data, not less. Moreover, the Examiner does not
sufficiently explain how the applied prior art as a whole suggests the
desirability of the Marshall-Dean-Floyd combination. See Lindemann
Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1462
(Fed. Cir. 1984) ("The claimed invention must be considered as a whole, and
the question is whether there is something in the prior art as a whole to
suggest the desirability, and thus the obviousness, of making the
combination."); see also KSR, 550 U.S. at 421 ("A factfinder should be
aware, of course, of the distortion caused by hindsight bias and must be
cautious of arguments reliant upon ex post reasoning.") (citation omitted).
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Accordingly, constrained by the record before us, we do not sustain
the Examiner's rejection under pre-AIA 35 U.S.C. § 103(a) of the claims of
Group I.
Group II: Claims 7-11, 27, and 30---40 (Claim 30)
The Examiner rejected claim 30 as obvious over the above-discussed
Marshall-Dean-Floyd combination further in view ofNevidomski. Final
Act. 18. Because the Examiner relies on the same stated motivation to
combine Marshall, Dean, and Floyd in rejecting illustrative claim 30 as in
rejecting claim 1, for the same reasons discussed above regarding claim 1,
we do not sustain the Examiner's rejection under pre-AIA 35 U.S.C.
§ 103(a) of the claims of Group II.
DECISION
We reverse the Examiner's obviousness rejections of claims 1--40.
REVERSED
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