Ex Parte Barsness et al

Board of Patent Appeals and Interferences

Jun 28, 2012

10965184 (B.P.A.I. Jun. 28, 2012)

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.
10/965,184 10/14/2004 Eric Lawrence Barsness ROC920040125US1 5344
46628 7590 06/29/2012
IBM CORPORATION, INTELLECTUAL PROPERTY LAW
DEPT 917
3605 HIGHWAY 52 NORTH
ROCHESTER, MN 55901-7829
EXAMINER
STACE, BRENT S
ART UNIT PAPER NUMBER
2161
MAIL DATE DELIVERY MODE
06/29/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ERIC LAWRENCE BARSNESS and
JOHN MATTHEW SANTOSUOSSO
____________________

Appeal 2010-002150
Application 10/965,184
Technology Center 2100
____________________

Before ST. JOHN COURTENAY III, JAMES R. HUGHES, and
ANDREW J. DILLON, Administrative Patent Judges.

PER CURIAM

DECISION ON APPEAL
Appellants appeal from the Examiner’s rejection of claims 1-4, 6-12,
14-18, 20-26, 28-32, 34-40, and 42. Claims 5, 13, 19, 27, 33, and 41
have been canceled. (Br. 4.) We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.
Representative Claim
1. A method, comprising:
Appeal 2010-002150
Application 10/965,184

2
pre-computing a whole segment query result for each of a
plurality of whole segments of data included in a database;
storing the pre-computed whole segment query results in
the database;
receiving a query specifying a defined structure range of
data in the database;
determining if any of the whole segments are within the
defined structure range;
performing the query on any partial segments of data
within the defined structure range; and
determining the result of the query based on the pre-
computed whole segment query results stored in the database
for any whole segments determined to be within the defined
structure range and the result of the query on any partial
segments within the defined structure range;
wherein the pre-computing the whole segment query
result for each of a plurality of whole segments of data included
in a database is performed in response to receiving the query
specifying the defined structure range of data in the database.
Rejections on Appeal
1, The Examiner rejects claims 1-4, 6, 7, 9-12, 14-18, 20, 21, 23-
26, 28-32, 34, 35, 37-40, and 42 under 35 U.S.C. § 102(b) as being
anticipated by U.S. Patent No. 6,009,271, issued Dec. 28, 1999 (“Whatley”).
2. The Examiner rejects claims 8, 22, and 36 under 35 U.S.C.
§ 103 (a) as being unpatentable over Whatley and U. S. Patent App. Pub.
No. 2004/0059757 A1, published Mar. 25, 2004 (“Hardman”).
Appeal 2010-002150
Application 10/965,184

3

ISSUE
Does the Examiner err in finding that Whatley discloses: (1)
“performing the query on any partial segments of data within the defined
structure range” and “determining the result of the query based on the pre-
computed whole segment query results stored in the database for any whole
segments determined to be within the defined structure range and the result
of the query on any partial segments within the defined structure range” as
recited in claim 1 and commensurately limitations in claims 15 and 29; and
(2) “performing the query on a third portion of data in the database, wherein
the third portion is a portion of the first portion other than the second
portion” and “computing the result of the query on the first portion based on
the pre-computed result and the result of the query on the third portion” as
recited in claim 6 and commensurately limitations in claims 20 and 34?

FINDINGS OF FACT
We adopt the Examiner’s findings in the Answer and the Final Office
Action as our own.

ANALYSIS
With respect to representative claim 1, Appellants contend that “the
record fails to establish that Whatley discloses each feature of the claims”
(Br. 16), specifically “performing the query on any partial segments of data
within the defined structure range” (Br. 17 (quoting claim 1)) and
“determining the result of the query based on the pre-computed whole
segment query results stored in the database for any whole segments
Appeal 2010-002150
Application 10/965,184

4
determined to be within the defined structure range and the result of the
query on any partial segments within the defined structure range” (Br. 21
(quoting claim 1)). (See Br. 16-22.)
We initially note that the “partial segments of data,” “result of the
query on any partial segments,” “whole segments,” and “pre-computed
whole segment query results” are merely labels or names for data. As such,
the “segments” and “query results” constitute non-functional descriptive
material, which merely corresponds to data and recites what the information
or data represents. The informational content of the data “does not lend
patentability to an otherwise unpatentable computer-implemented product or
process.” Ex parte Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008)
(precedential). See Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005)
(informative) (Fed. Cir. Appeal No. 2006-1003), aff’d, Rule 36 (June 12,
2006) (“wellness-related” data in databases and communicated on
distributed network did not functionally change either the data storage
system or the communication system used in the claimed method). See also
In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); Ex Parte Nehls, 88
USPQ2d at 1887-90 (discussing non-functional descriptive material).
Accordingly, we need not consider limitations to the informational content
of the data in our patentability determination.
Even if we, arguendo, ascribe patentable weight to the disputed non-
functional descriptive material, we agree with the Examiner that Whatley
describes the disputed features of claim 1. (Ans. 3-4, 12-15.) Accordingly,
we adopt and incorporate the Examiner’s findings (id.) herein.
Additionally, Appellants failed to file a Reply Brief rebutting the
findings and responsive arguments made by the Examiner in the Answer.
Appeal 2010-002150
Application 10/965,184

5
Thus, we are unpersuaded of error in the Examiner’s rejection of
independent claim 1, as well as independent claims 15 and 29 and dependent
claims 2-4 (dependent on claim 1), 16-18 (dependent on claim 15), and 30-
32 (dependent on claim 29) not separately argued with particularity. It
follows that we affirm the Examiner’s anticipation rejection of claims 1-4,
15-18, and 29-32.
With respect to representative claim 6, as with claim 1 (supra),
Appellants contend that “the record fails to establish that Whatley discloses
each feature of the claims” (Br. 16), specifically “performing the query on a
third portion of data in the database, wherein the third portion is a portion of
the first portion other than the second portion” (Br. 19 (quoting claim 6))
and “computing the result of the query on the first portion based on the pre-
computed result and the result of the query on the third portion” (Br. 22
(quoting claim 6)). (See Br. 16-17, 19-23.)
Similar to claim 1 (supra), the “first portion,” “second portion,” and
“third portion of data,” as well as the “pre-computed result” and “result of
the query on the third portion” are merely non-functional descriptive
material. At most, the claim requires that some data – the “third portion” –
includes a part of some other data – “a portion of the first portion” – that
does not include some other data – “other than the second portion.”
As with claim 1, even if we, arguendo, ascribe patentable weight to
the disputed non-functional descriptive material, we agree with the
Examiner that Whatley describes the disputed features of claim 6. (Ans. 5-6,
15-19.) Accordingly, we adopt and incorporate the Examiner’s findings (id.)
herein.
Appeal 2010-002150
Application 10/965,184

6
Additionally, Appellants failed to file a Reply Brief rebutting the
findings and responsive arguments made by the Examiner in the Answer.
Thus, we find Appellants’ contrary arguments unavailing of error in the
Examiner’s rejection of independent claim 6, as well as independent claims
20 and 34 and dependent claims 7, 9-12, and 14 (dependent on claim 6), 21,
23-26, and 28 (dependent on claim 20), and 35, 37-40, and 42 (dependent on
claim 34) not separately argued with particularity. It follows that we affirm
the Examiner’s anticipation rejection of claims 6, 7, 9-12, 14, 20, 21, 23-26,
28, 34, 35, 37-40, and 42.
With respect to dependent claims 8, 22, and 36, Appellants merely
argue that “claims 8, 22, and 36 are allowable for at least the reasons given
in support of claims 6, 20, and 34,” and that Hardman does not cure the
Examiner’s deficient rejection of claims 6, 20, and 34. (Br. 24.) We found
Appellants’ arguments unpersuasive of error in the Examiner’s anticipation
of claim 6 (supra). Accordingly, we find Appellants’ arguments
unpersuasive of error in the Examiner’s obviousness rejection of claims 8,
22, and 36. Therefore, we affirm the Examiner’s obviousness rejection of
dependent claims 8, 22, and 36.

CONCLUSIONS OF LAW
Appellants have not shown that the Examiner erred in rejecting claims
1-4, 6, 7, 9-12, 14-18, 20, 21, 23-26, 28-32, 34, 35, 37-40, and 42 under 35
U.S.C. § 102(b).
Appellants have not shown that the Examiner erred in rejecting claims
8, 22, and 36 under 35 U.S.C. § 103(a).

Appeal 2010-002150
Application 10/965,184

7
DECISION
We affirm the Examiner’s rejections of claims 1-4, 6, 7, 9-12, 14-18,
20, 21, 23-26, 28-32, 34, 35, 37-40, and 42 under 35 U.S.C. § 102(b).
We affirm the Examiner’s rejections of claims 8, 22, and 36 under 35
U.S.C. § 103(a).

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

AFFIRMED

llw