Ex Parte BurgerDownload PDFPatent Trial and Appeal BoardFeb 24, 201612339416 (P.T.A.B. Feb. 24, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/339,416 12/19/2008 26890 7590 02/26/2016 JAMES M. STOVER TERADATA US, INC. 10000 INNOVATION DRIVE DAYTON, OH 45342 FIRST NAMED INVENTOR Louis Burger 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. 20042 (NCR.0157US) 7162 EXAMINER KUDDUS, DANIEL A ART UNIT PAPER NUMBER 2154 NOTIFICATION DATE DELIVERY MODE 02/26/2016 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): michelle. boldman @teradata.com jam es.stover@teradata.com td.uspto@outlook.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LOUIS BURGER Appeal2014-000083 Application 12/339,416 Technology Center 2100 Before JOSEPH L. DIXON, THU A. DANG, and CARLL. SILVERMAN Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL Appeal2014-000083 Application 12/339,416 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to an index selection based on a compressed workload. Abstract. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A computer-implemented method executed by at least one processor, compnsmg: receiving a first workload that contains predicates contained in database queries, wherein the predicates are logged; selecting a subset of the predicates based on costs associated with the predicates, wherein a number of predicates in the subset of the predicates is less than a total number of the predicates, wherein the selection of the subset of predicates is performed prior to a start of a selection of indexes process; forming a compressed workload using the selected subset of the predicates; performing the selection of indexes process based on the compressed workload; and generating a response to at least one of the database queries based on the selected indexes. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Brown et al. Freytag et al. US 2003/0093408 Al US 6,738,755 Bl 2 May 15, 2003 May 18, 2004 Appeal2014-000083 Application 12/339,416 REJECTIONS The Examiner made the following rejections: Claims 1-20 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Brown in view of Freytag. ANALYSIS 35 U.S.C. § 112, First Paragraph, Written Description "What is claimed by the patent application must be the same as what is disclosed in the specification; otherwise the patent should not issue." Festa Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 736 (2002). All that is necessary to satisfy the description requirement is to show that one is "in possession" of the invention. The decision in Lockwood v. Am. Airlines, Inc., 107 F.3d 1565 (Fed. Cir. 1997) accurately states the test. "One shows that one is "in possession" of the invention by describing the invention, with all its claimed limitations, not that which makes it obvious. Id. ("[T]he applicant must also convey to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention. The invention is, for purposes of the 'written description' inquiry, whatever is now claimed.") (emphasis in original). One does that by such descriptive means as words, structures, figures, diagrams, formulas, etc., that fully set forth the claimed invention. Although the exact terms need not be used in haec verba, see Eiselstein v. Frank, 52 F.3d 1035, 1038 . . . (Fed.Cir.1995) ("[T]he prior application need not describe the claimed 3 Appeal2014-000083 Application 12/339,416 subject matter in exactly the same terms as used in the claims .... "),the specification must contain an equivalent description of the claimed subject matter." Lockwood v. Am. Airlines, Inc., 107 F.3d at 1572. Compliance with the written description requirement is a question of fact. Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985). The Examiner maintains: More specifically claims 1, 11, and 18, recites the limitations of 11 • • • wherein the selection of the subset of predicates is performed prior to a start of a selection of indexes process . . . . 11 Or 11 • • • wherein the selection of the subset is performed prior to a start of performance of a selection of indexes process . . . 11 does not appear to be described in the original specification in a way to reasonably explain to one skilled in the art. Examiner is unable to locate these limitations in the original specification. (Final Act. 3, see generally Ans. 4---6). Appellant responded to the Examiner's detailed explanations set forth in the Examiner's Answer, and Appellant provides a persuasive showing of the flaws in the Examiner's analysis. (Reply Br. 2--4). We agree with Appellant and find Appellant's originally filed Specification provides adequate written description support for the invention recited in independent claims 1, 11, and 18. Consequently, we cannot sustain the rejection of claims 1-20 based on a lack of written description support. 35 U.S.C. § 103(a) With respect to independent claims 1, 11, and 18, the Examiner maintains that the combination of the Brown and the Freytag references teaches and suggests the claimed invention. 4 Appeal2014-000083 Application 12/339,416 "[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting aprimafacie case ofunpatentability." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). "The Examiner has the initial burden to set forth the basis for any rejection so as to put the patent applicant on notice of the reasons why the applicant is not entitled to a patent on the claim scope that he seeks - the so [-]called 'primafacie case."' Ex parte Frye, No. 2009-006013, 2010 WL 889747, at *3 (BPAI Feb. 26, 2010) (precedential). "'On appeal to the Board, an applicant can overcome a rejection by showing insufficient evidence of prima facie obviousness or by rebutting the prima facie case with evidence of secondary indicia of nonobviousness. "' In re Kahn, 441 F.3d 977, 985-86 (Fed.Cir. 2006) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed.Cir. 1998)). Appellant contends Freytag fails to teach or suggest the claimed "wherein the selection of the subset of predicates is performed prior to a start of a selection of indexes process." (App. Br. 7). Appellant further contends that "the Examiner has improperly attempted to piece together different portions of Freytag to establish a prima facie case of obviousness." (Reply Br. 6). Moreover, Appellant contends that "the Examiner has improperly combined two separately-described concepts in the Freytag ... [reference]." (Reply Br. 6). Additionally, Appellant contends "Freytag pertains to the planning phase not the pre-planning phase as alleged by the Examiner." (Reply Br. 6-7). 5 Appeal2014-000083 Application 12/339,416 We find Appellant's explanation and line of reasoning persuasive with the respect to the sequence of steps recited in the language of independent claims 1, 11, and 18. Moreover, Appellant has shown by a preponderance of the evidence that the understanding of one of ordinary skill that would have not rendered obvious the claimed "wherein the selection of the subset of predicates is performed prior to a start of a selection of indexes process," as recited in independent claim 1. Independent claims 11 and 18 contains similar limitations which we find that the Examiner's showing to be unsupported by a preponderance of the evidence. On the record, we find that the preponderance of the evidence supports the Appellant's showing that the combined teachings of the Brown and Freytag references do not render the claimed invention obvious. CONCLUSIONS The Examiner erred in rejecting claims 1-20 based upon a lack of written description support, and the Examiner has erred in rejecting claims 1-20 based upon obviousness. DECISION For the above reasons, the Examiner's rejections of claims 1-20 are reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). REVERSED 6 Copy with citationCopy as parenthetical citation