Ex Parte Barboi et al

Board of Patent Appeals and Interferences

Apr 21, 2010

10981837 (B.P.A.I. Apr. 21, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DIMA BARBOI and LEONID SHTILMAN
____________________

Appeal 2009-0127241
Application 10/981,837
Technology Center 2100
____________________

Decided: April 21, 2010

Before HOWARD B. BLANKENSHIP, JEAN R. HOMERE, and
DEBRA K. STEPHENS, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed November 5, 2004. The real party in interest is Computer Associates
Think, Inc. (App. Br. 2). An oral hearing was held in this appeal on April
14, 2010.

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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) (2002) from the final
rejection of claims 1, 3 through 6, 9 through 11, 13 through 17, and 20.
Claims 2, 7, 8, 12, 18, and 19 have been canceled. (App. Br. 2). We have
jurisdiction under 35 U.S.C. § 6(b) (2008).
We reverse and enter a new ground of rejection.2
Appellants’ Invention
As depicted in Appellants’ Figure 1, Appellants invented a replica
server (150) having a rewind log (190) for tracking at least one modification
to an application data replica (165) subsequent to being validated. (Spec. 5-
6, paras. [028-029].) The replica server (150) further includes a rewinder
(185) that uses the tracked information to reverse the modification to the
application data thereby restoring it to a state prior to the validation. (Id.)
Illustrative Claim
Independent claim 1 further illustrates the invention. The claim reads
as follows:
1. A method for validating replicated data, the method
comprising:

tracking modifications to an application data replica, the
tracked modifications enabling the application data replica to be
restored to one or more prior states;

2 The Examiner objected to the computer-readable medium of claim 16 as
being directed to a medium that does not include statutory subject matter
(Ans. 3.) We vacate this objection, and enter in lieu thereof a new ground of
rejection, infra.
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receiving one or more requests to update the application
data replica;

validating the application data replica, wherein the
tracked modifications include at least one modification to the
application data replica caused by the validating;

reversing the at least one modification to the application
data replica, wherein the reversing causes the application data
replica to be restored to a state prior to the validating; and

applying the received update requests to the restored
application data replica, wherein the tracked modifications
include at least one modification to the application data replica
caused by the applying.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
“Oracle® Database Advanced Replication Management API Reference, 10g
Release 1(10.1)”, December 2003. (ORACLE®.)

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
1. Claim 20 stands rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
2. Claim 20 stands rejected under 35 U.S.C. § 112, second
Paragraph as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellants regard as the invention.
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3. Claims 1, 3 through 6, 9 through 11, 13 through 17, and 20
stand rejected under 35 U.S.C. § 102(a) as being anticipated by Oracle.

Appellants’ Contentions
First, Appellants contend that claim 20 is directed to statutory subject
matter since it recites a system including a processing device, which carries
out the functions of the claim. (App. Br. 7-8, Reply Br. 2-4.)
Next, Appellants contend that claim 20 is not indefinite since one of
ordinary skill would be apprised that the recitation “operable to” indicates
that, in operation, the processing device performs the recited functions.
(App. Br. 8, Reply Br. 4-5.)
Last, Appellants contend that Oracle does not teach tracking at least
one modification to an application data replica subsequent to a validation
operation on the data, and reversing the modification to thereby restore the
application data replica to a state prior to the validation, as recited in
independent claim 1. (App. Br. 10-12, Reply Br. 5-6.) According to
Appellants, while Oracle discloses tracking differences between two
replicated tables to thereby rectify them, the tracked discrepancies are used
to synchronize the two tables, as opposed to restore data in a table to a state
prior to a modification, as claimed. (Id.)

Examiner’s Findings
The Examiner finds that the system of claim 20 is directed to non-
statutory subject matter. In particular, the Examiner finds that the recited
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system is directed to software per se since the Specification indicates that the
system can be implemented in software, and it is completely silent on what a
processing device is. (Ans. 11.)
Next, the Examiner finds that the system of claim 20 is indefinite
since the recitation “operable to” is an optional limitation that does not
require the claimed functions to be performed. (Ans. 12.)
Last, the Examiner finds that Oracle’s disclosure of a log that tracks
modifications made to data in a table to thereby synchronize the data with
another table by either overwriting or discarding values as necessary teaches
restoring the data to a state prior to a modification. (Ans. 13-14.) Further,
the Examiner finds that Oracle’s disclosure of sending old values to a site
when a conflict arises explicitly teaches restoring modified data to a prior
state. (Id.)

II. ISSUES
1. Have Appellants shown that the Examiner erred in finding that
the system of claim 20 is directed to software per se?
2. Have Appellants shown that the Examiner erred in finding that
the recitation “operable to” renders claim 20 indefinite?
3. Have Appellants shown that the Examiner erred in finding that
Oracle teaches tracking at least one modification to an application data
replica subsequent to a validation operation on the data, and reversing the
modification to thereby restore the application data replica to a state prior to
the validation, as recited in independent claim 1?
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III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Appellants’ Invention
1. Appellants’ Specification indicates that a version of the claimed
system can be implemented in (1) software to be executed on a general
purpose computer, (2) hardware, or (3) a combination of both. (Spec. 11,
para. [0058.]
2. Appellants’ Specification indicates that the software may be
embodied in a medium, which includes information downloaded from a
wireless communication network, such as instructions carried on a signal
propagating over a communication medium. (Id.)

Oracle
3. Oracle discloses using an overwrite method and/or a discard
method for resolving update conflicts between replicated tables. In
particular, the overwrite method uses a new value from an originating site to
replace the current value at a destination site, whereas, the discard method
ignores the value from the originating site. (P. 6-3.)
4. Oracle discloses mechanism that automatically tracks which
rows in a materialized view log that were previously used during refreshes in
order to purge them. (P. 8-18.)
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5. Oracle discloses altering a replicated object in a database by
adding or deleting a row as necessary in order to rectify differences between
two tables. (P. 9-2, 9-10.)
6. Oracle discloses determining whether to send an old value of a
column in replicated updates or deletes. (P. 23-16.)

IV. PRINCIPLES OF LAW
Non-Statutory Subject Matter
Under § 101, there are four categories of subject matter that are
eligible for patent protection: (1) processes; (2) machines; (3) manufactures;
and (4) compositions of matter. 35 U.S.C. § 101. But even if a claim fits
within one or more of the statutory categories, it may not be patent eligible.
In re Ferguson, 558 F.3d 1359, 1363 (Fed. Cir. 2009), petition for cert. filed,
77 U.S.L.W. 3680 (Jun. 20, 2009) (No. 80-1501). “Phenomena of nature,
though just discovered, mental processes, and abstract intellectual concepts
are not patentable, as they are the basic tools of scientific and technological
work.” Id. (quoting Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (internal
quotation marks omitted)).
“A machine is a concrete thing, consisting of parts, or of certain
devices and combination of devices. This includes every mechanical device
or combination of mechanical powers and devices to perform some function
and produce a certain effect or result.” Ferguson, 558 F.3d at 1364 (quoting
In re Nuijten, 500 F.3d 1346, 1355 (Fed. Cir. 2007), reh’g denied en banc,
515 F.3d 1361 (Fed. Cir. 2008), and cert. denied, 129 S. Ct. 70 (2008)).
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A “manufacture” (in its verb form) is defined as “the production of
articles for use from raw or prepared materials by giving to these materials
new forms, qualities, properties, or combinations, whether by hand-labor or
by machinery.” Nuijten, 500 F.3d at 1356 (internal quotation marks and
emphasis omitted). “An article is a particular substance or commodity. . . .”
Id. (internal quotation marks omitted).

Indefiniteness
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986).3 The claim as a
whole must be considered to determine whether it apprises one of ordinary
skill in the art of its scope, and therefore serves the notice function required
by 35 U.S.C. § 112, second paragraph by providing clear warning to others
as to what constitutes the infringement of the patent. Solomon v. Kimberly-
Clark Corp., 216 F.3d 1372, 1379 (Fed. Cir. 2000.) If the language of the
claim is such that a person of ordinary skill in the art could not interpret the
metes and bounds of the claims so as to understand how to avoid

3 “The legal standard for definiteness is whether a claim reasonably apprises
those of skill in the art of its scope." In re Warmerdam, 33 F.3d 1354, 1361
(Fed. Cir. 1994) (citing Amgen Inc. v. Chugai Pharmaceutical Co. Ltd.,
927 F.2d 1200, 1217 (Fed. Cir.1991)). The "inquiry therefore is merely to
determine whether the claims do, in fact, set out and circumscribe a
particular area with a reasonable degree of precision and particularity." In re
Moore, 439 F.2d 1232, 1235 (CCPA 1971).
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infringement, a rejection of the claim under 35 U.S.C. § 112, second
paragraph is deemed appropriate. Morton Int’l, Inc. v. Cardinal Chemical
Co., 5 F.3d 1464, 1470 (Fed. Cir. 1993).

Anticipation
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citing Minn. Mining & Mfg.
Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed.
Cir. 1992)).
Anticipation of a patent claim requires a finding that the claim
at issue “reads on” a prior art reference. In other words, if
granting patent protection on the disputed claim would allow
the patentee to exclude the public from practicing the prior art,
then that claim is anticipated, regardless of whether it also
covers subject matter not in the prior art.

Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed. Cir. 1999)
(internal citation omitted).

V. CLAIM GROUPINGS
Appellants argue the patentability of claim 1 in conjunction with the
anticipation rejection of claims 1, 3 through 6, 9 through 11, 13 through 17,
and 20. (App. Br. 10-12). In accordance with 37 C.F.R. § 41.37(c)(1)(vii),
we will consider claims 3 through 6, 9 through 11, 13 through 17, and 20 as
standing or falling with representative claim 1.
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VI. ANALYSIS
35 U.S.C. § 101 Rejection
Independent claim 20 recites, in relevant part, a system comprising at
least one processing device for validating replicated data. (App. Br. 17,
Claims App’x.) As detailed in the Findings of Facts, Appellants’
Specification reveals that the system can be implemented in software
executed on a general purpose computer, hardware, or a combination of
both. (FF. 1.) We find that the claimed system is directed to the replica
server (150) depicted in Figure 1 of Appellants’ drawings, which contains a
processing device that executes a rewinder module (185) for validating the
replicated data. We thus find the replica server to be a machine, which is “a
concrete thing consisting of parts, or of certain devices and combination of
devices. This includes every mechanical device or combination of
mechanical powers and devices to perform some function and produce a
certain effect or result.” Ferguson, 558 F.3d at 1364 citing Nuijten, 500
F.3d 1346 (internal quotation marks omitted). Consequently, we agree with
Appellants that since the claimed system specifically recites a processing
device to perform the recited functions, it is directed to a machine, which is
a statutory class of subject matter.

35 U.S.C. § 112, Second Rejection
Independent claim 20 recites, in relevant part, that the system includes
a processing device operable to perform the claimed functions. (App. Br. 17,
Claims App’x.) As discussed in the preceding paragraph, Appellant’s
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Specification reveals that the claimed system is directed to a replica server,
which includes a rewinder module to perform the claimed functionalities.
We find that the expression “operable to” denotes that the processing device
is capable of operating to perform the claimed functions, or simply performs
such functions when it is operating. While the cited expression is broad, it is
not indefinite. As set forth in the Principles of Law section, the
determination of whether or not a claim is definite should be made within
the context of Appellants’ Specification, and not in a vacuum. In our view,
one of ordinary skill in the art, having read Appellant’s Specification, would
be apprised of the scope of the claim. That is, the processing device is
capable of performing the claimed functions to validate the replicated data.
Therefore, the Examiner’s position with respect to the standard for
definiteness is untenable.

35 U.S.C. § 102(e) Rejection
Independent claim 1 requires, in relevant parts, tracking at least one
modification to an application data replica subsequent to a validation
operation on the data, and reversing the modification to thereby restore the
application data replica to a state prior to the validation. (App. Br. 14,
Claims App’x.)
As set forth in the Findings of Facts section, Oracle discloses a
mechanism log for tracking the previous use of records with a material view
log. (FF. 4.) Oracle further discloses resolving conflicting updates in
replicated tables by inserting or deleting records therefrom as necessary to
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thereby synchronize the tables. (FF. 3, 5.) Additionally, Oracle discloses
sending old values to destination site to replace an existing replicated value,
which has been deleted or updated. (FF. 1, 6.) We find that by sending an
old value to replace an existing value at a replicated table, which has been
modified, Oracle teaches restoring data in the replicated table to a state prior
to the modification. However, we find nothing in Oracle that teaches or even
suggests that the disclosed modification was performed in connection to a
validation of the replicated data. Consequently, Appellants have shown that
the Examiner erred in finding that Oracle anticipates claim 1.

VII. NEW GROUND OF REJECTION
35 U.S.C. § 101 Rejection
We enter the following new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
Claim 16 recites, in relevant part, “[a] computer readable media
including comprising computer-readable instructions.” (App. Br. 16, Claims
App’x.)
According to Appellants' Specification, computer readable media
includes carrier waves. (FF. 2.) We thus find that the computer-readable
media recited in the claim encompasses the use of a computer data signal
embodied in a carrier wave to transmit information. A computer data signal
embodied in a carrier wave is a transitory, propagating signal not within any
of the four statutory categories and, therefore, non-statutory. See In re
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Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007.) It follows that claim 16 is
directed to non-statutory subject matter.

VII. CONCLUSIONS OF LAW
1. Appellants have established that the Examiner erred in rejecting
claim 20 as being directed to non-statutory subject matter.
2. Appellants have established that the Examiner erred in rejecting
claim 20 as being indefinite under 35 U.S.C. § 112, second paragraph for
failing to particularly point out the invention and
3. Appellants have established that the Examiner erred in rejecting
claims 1, 3 through 6, 9 through 11, 13 through 17, and 20 as being
anticipated under 35 U.S.C. § 102(a) by Oracle.
4. We have entered a new ground of rejection against claim 16 as
being directed to non-statutory subject matter under 35 U.S.C. § 101.
DECISION
We reverse the Examiner’s rejections against claims 1, 3 through 6, 9
through 11, 13 through 17, and 20. We have entered a new ground of
rejection against claim 16 under 37 C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new grounds of
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rejection to avoid termination of proceedings (37 C.F.R. § 1.197 (b)) as to
the rejected claims:

(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner …

(2) Request rehearing. Request that the proceeding be reheard under
37 C.F.R. § 41.52 by the Board upon the same record …

REVERSED
37 C.F.R. § 41.50(b)

Vsh

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