Ex Parte Butler et al

Patent Trial and Appeal Board

Mar 4, 2014

11440118 (P.T.A.B. Mar. 4, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MARK HENRY BUTLER and DAVID MURRAY BANKS1
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Appeal 2011-009160
Application 11/440,118
Technology Center 2100
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Before DEMETRA J. MILLS, ERIC GRIMES, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims related to a
method of rewriting a search query, which have been rejected as obvious.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 Appellants identify the Real Party in Interest as Hewlett-Packard
Development Company, LP (App. Br. 3).
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STATEMENT OF THE CASE
The Specification states that the description of an object in a database
“may be expanded and further properties deduced using a technique known
as ‘inference’. For example, an object in the database may have a type ‘car’
so it possesses an attribute of type ‘car’ and via inference it also possesses an
attribute of type ‘vehicle’ which is a superclass of ‘car’.” (Spec. 1:29-32.)
The Specification describes a “method [that] may be considered as
implementing inferencing at the client side to allow inferencing with
existing or new systems that do not necessarily include inferencing in the
database server” (id. at 3:14-16). “By allowing inferred properties and/or
classes to be dealt with when the query is prepared, inferences need not be
added to the data in the database, so it is not necessary to recalculate
inferences when new data is added to the database” (id. at 3:28-30).
Claims 1-10 and 13-23 are on appeal. Claim 1 is illustrative and reads
as follows (emphasis added):
1. A method of operating a client for a database system, the database
system having a server which stores data in the form of data items and
properties of the data items, wherein the data items are grouped into classes,
wherein at least one of relations between properties and relations between
classes are defined, relations between properties being defined as directed
links linking pairs of properties as superproperty and subproperty, the
subproperty inheriting from the superproperty and from any properties from
which the superproperty inherits, relations between classes being defined as
directed links between pairs of classes, each pair including a superclass and
a subclass, the subclass inheriting from the superclass and from any classes
from which the superclass inherits, the method comprising:
accepting an input query including at least one reference to a property
or at least one reference to a class;
rewriting at the client the input query as a rewritten query by
including together with a reference to a property that is a superproperty a
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reference to one or more properties which inherit from the superproperty
and/or including together with a reference to a class that is a superclass a
reference to one or more classes which inherit from the superclass;
sending the rewritten query from the client to the database server; and
receiving results from the server.

DISCUSSION
The Examiner has rejected claims 1-5, 10, 13, 14, and 18-23 under
35 U.S.C. § 102(e) as anticipated by Lee2 (Ans. 3), and has rejected claims
6-9 and 15-17 under 35 U.S.C. § 103(a) as obvious based on Lee and
Monge3 (Ans. 19). The same issue is dispositive for both rejections.
The Examiner finds that Lee discloses all the limitations of claim 1,
including “rewriting at the client the input query as a rewritten query (see
[0051] . . .)” (id. at 4). The Examiner finds that “the SQL query plan
generator rewrites the user queries” and “nothing is shown or suggests that
the SQL generator is in fact a server” (id.). The Examiner reasons that “[i]n
fact the exact opposite is suggested” because the SQL query plan generator
works together with the ontology query generator to “transform the user
query into a language better understood by a relational database. This
suggests that the SQL query generator must reside on the client with the
Ontology query generator.” (Id. at 4-5.)
Appellants argue that “in Lee, the ‘rewriting’ is performed at a server,
and not at a client” (App. Br. 13). Appellants reason that
the SQL query plan generator 808 receives information from
servers (ontology query server 822 and mapping server 805)

2 Lee et al., US 2006/0161544 A1, published Jul. 20, 2006.
3 Monge et al., US 5,819,257, issued Oct. 6, 1998.
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and sends [the] recomposed SQL query to other servers
(database sources 810 and 812) (See also Lee, paragraphs
[0052] and [0061]). Thus, the SQL query plan generator 808
works together with other servers to generate the recomposed
SQL query. . . . Thus, the SQL query plan generator 808 must
be located on a server and not on a client, as recited in claim 1.
(App. Br. 13.)
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631
(Fed. Cir. 1987). “A reference may anticipate inherently if a claim
limitation that is not expressly disclosed ‘is necessarily present, or inherent,
in the single anticipating reference.’. . . The inherent result must inevitably
result from the disclosed steps; ‘[i]nherency . . . may not be established by
probabilities or possibilities.’” In re Montgomery, 677 F.3d 1375, 1379-80
(Fed. Cir. 2012) (citations omitted).
Appellants and the Examiner dispute whether Lee meets the claim
limitation requiring “rewriting at the client the input query as a rewritten
query” (claim 1, emphasis added). The Examiner contends that it does, but
points to no express description of that limitation in Lee.
Rather, the Examiner reasons that Lee’s description “suggests that the
SQL query generator must reside on the client with the Ontology query
generator” (Answer 5). The Examiner does not, however, provide sound
technical reasons to support this conclusion. Lee expressly describes the
translation carried out by the ontology query generator as taking place in
Ontology Query Server 822: “The Ontology Query Generator 804 translates
the submitted query to an ontology query in server 822” (Lee 4, ¶ 56). The
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evidence therefore does not support the Examiner’s conclusion that the
ontology query generator must reside on the client.
With regard to the SQL query plan generator, the Examiner reasons
that it “must reside on the client with the Ontology query generator” because
the “ontology query generator and SQL query plan generator together
transform the user query into a language better understood by a relational
database” (Ans. 5). The Examiner, however, does not provide technical
reasoning to support the conclusion that, because the ontology query
generator and SQL query plan generator both act on the user query, they
must be located on the client. As noted above, in fact, Lee expressly
describes the translation done by the ontology query generator as being done
in the Ontology Query Server. Based on that disclosure, it would appear
that, even if the Examiner is correct that these components must reside on
the same machine, that machine would be the Ontology Query Server, not
the client.
In response to Appellants’ argument, the Examiner finds that Lee’s
“ontology query generator 804 rewrites the human queries into semantic
queries which can be understood by the semantic model” (Ans. 24), and
reasons that the ontology query generator and report generator “must be
within the client system in order [to] translate the human query and to render
the report and results on the screen” (id.). As discussed above, however, Lee
expressly states that its ontology query generator carries out its translation in
Ontology Query Server 822, not at the client machine.
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.” In
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re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). To show that a limitation
is inherently disclosed by a reference requires showing that it is “necessarily
present” in the reference. In re Montgomery, 677 F.3d at 1379-80.
“Inherency may not be established by probabilities or possibilities.”
Scaltech Inc. v. Retec/Tetra L.L.C., 178 F.3d 1378, 1384 (Fed. Cir. 1999).
For the reason discussed above, the Examiner has not met the burden of
providing evidence showing that the disputed limitation is inherently
disclosed by Lee. We therefore reverse the rejection of claim 1 as
anticipated by Lee.
Each of claims 13, 18, and 20-23, the other independent claims, also
requires rewriting the query at the client. The rejection of these claims, and
dependent claims 2-5, 10, 14, and 19, is therefore reversed for the same
reason as claim 1. The rejection of claims 6-9 and 15-17 as obvious based
on Lee and Monge (Ans. 19-22) relies on the Examiner’s finding that Lee
discloses all of the limitations of the independent claims, and is therefore
reversed for the reason discussed above.
SUMMARY
We reverse both of the rejections on appeal.

REVERSED

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