Ex Parte Day et al

Board of Patent Appeals and Interferences

May 18, 2012

11557601 (B.P.A.I. May. 18, 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.
11/557,601 11/08/2006 Paul Reuben Day ROC920060291US1 1816
64043 7590 05/21/2012
Streets & Steele-IBM Corporation
13100 Wortham Center Drive, Suite 245
HOUSTON, TX 77065
EXAMINER
NGUYEN, LOAN T
ART UNIT PAPER NUMBER
2156
MAIL DATE DELIVERY MODE
05/21/2012 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 PAUL REUBEN DAY, THOMAS OWEN MCKINLEY, and
BRIAN ROBERT MURAS
_____________

Appeal 2010-003126
Application 11/557,601
Technology Center 2100
______________

Before DEBRA K. STEPHENS, MICHAEL R. ZECHER, and
JUSTIN T. ARBES, Administrative Patent Judges.

ARBES, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/557,601

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-20, the only claims pending in the application on appeal. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).1
We reverse.
The claims are directed to a method and computer program product
for searching a database. Claim 1 is exemplary:
1. A method of searching a database, comprising:
choosing a plurality of queries being executed on a
database table;
creating a data set that is smaller than the database table
and satisfies the plurality of executed queries;
choosing a target query, other than one of the executed
plurality of queries, that is satisfied by the data set; and
executing the target query on the data set.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ellis
Ziauddin
US 6,360,214 B1
US 2005/0177557 A1

Mar. 19, 2002
Aug. 11, 2005

1 Our decision will make reference to Appellants’ Appeal Brief (“App. Br.,”
filed June 16, 2009), and the Examiner’s Answer (“Ans.,” mailed September
29, 2009) and Final Rejection (“Final Rej.,” mailed March 31, 2009).
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REJECTIONS
Claims 1-16 and 18-20 stand rejected under 35 U.S.C § 102(b) as
being anticipated by Ellis. Ans. 3-9.
Claim 17 stands rejected under 35 U.S.C § 103(a) as being
unpatentable over Ellis in view of Ziauddin. Ans. 9-10.2

ISSUE
Appellants argue on pages 5-7 of the Appeal Brief that the Examiner’s
rejection of independent claims 1 and 18 is in error. These arguments
present us with the issue: did the Examiner err in finding that Ellis discloses
“choosing a target query, other than one of the executed plurality of queries,
that is satisfied by the data set,” as recited in claim 1, and commensurately
recited in claim 18?

ANALYSIS
Appellants argue that Ellis uses statistical analysis of a database to
optimize a particular query, and does not disclose the elements of claim 1

2 The Final Rejection also rejected claims 18-20 under 35 U.S.C. § 101.
Final Rej. 3. The Examiner did not repeat this rejection in the Answer, and
agreed with Appellants’ statement that the only grounds of rejection to be
reviewed on appeal are those under 35 U.S.C. §§ 102(b) and 103(a). See
Ans. 2; App. Br. 4. Appellants also did not address the rejection in their
Appeal Brief, other than citing a May 19, 2009 telephone call with the
Examiner. App. Br. 7. Therefore, we conclude that the rejection under 35
U.S.C. § 101 has been withdrawn. See Ex parte Emm, 118 USPQ 180, 181
(BPAI 1957) (rejection not referred to in an Examiner’s Answer is assumed
to have been withdrawn). We also do not address the Examiner’s objections
to the use of “that” in the claims, which relate to petitionable subject matter
under 37 C.F.R § 1.181. See Final Rej. 2-3.
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pertaining to a “plurality of executed queries.” App. Br. 6-7. We agree with
Appellants that Ellis does not disclose “choosing a target query, other than
one of the executed plurality of queries, that is satisfied by the data set,” and
therefore need not address Appellants’ remaining arguments regarding the
other features of the claim.
Ellis discloses that an “execution plan” comprises the “numerous
procedural operations,” such as “joins and table scans,” that must be
performed to complete a Structured Query Language (SQL) query. Ellis,
col. 6, ll. 50-59. Because those procedural operations can be executed in
different orders, “[t]here may be numerous execution plans that can be
developed for any one SQL query,” some of which are more efficient than
others. Ellis, col. 6, ll. 55-67. Ellis uses database statistics to select the plan
that is the most efficient. Ellis, col. 6, l. 63-col. 7, l. 21.
The Examiner found that selecting the most efficient execution plan in
Ellis amounts to “choosing a target query, other than one of the executed
plurality of queries, that is satisfied by the data set.” Ans. 3-4, 10 (citing
Ellis, col. 3, ll. 9-13; col. 6, ll. 61-67; col. 8, ll. 1-23). Claim 1, however,
requires that the chosen target query be “other than one of the executed
plurality of queries.” The Examiner has not adequately explained how the
most efficient execution plan is a target query different from any other
query. The Examiner also identified the general set of joins and table scans
for one unspecified query as the “executed plurality of queries” (Ans. 10),
but did not explain how the most efficient execution plan is different from
those operations. Finally, claim 1 recites choosing a target query “that is
satisfied by the data set,” implying that the target query and data set cannot
be the same thing. But the Examiner appears to identify the most efficient
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execution plan as both the “target query” and the “data set” in claim 1. Ans.
10.
Based on the record before us, we are constrained to find that Ellis
does not disclose “choosing a target query, other than one of the executed
plurality of queries, that is satisfied by the data set,” and therefore do not
sustain the rejection of claim 1, as well as claim 18, which recites the same
“target query” feature, and corresponding dependent claims 2-16 and 19-20.
We also note that Appellants separately challenge the rejection of
dependent claim 17 under 35 U.S.C. § 103(a). App. Br. 8-10. Because we
find that Ellis does not teach or suggest the “target query” feature, for the
reasons explained above, and Ziauddin has not been relied upon by the
Examiner to cure the above-noted deficiency with Ellis, we need not reach
the obviousness arguments raised by Appellants. Accordingly, we do not
sustain the Examiner’s rejection of dependent claim 17 under 35 U.S.C.
§ 103(a).

NEW GROUND OF REJECTION
We enter the following new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b). Claims 18-20 are rejected under 35
U.S.C. § 101 as being directed to non-statutory subject matter.
Our reviewing court has found that transitory, propagating signals are
not within any of the four statutory categories of patentable subject matter
(process, machine, manufacture, or composition of matter). Therefore, a
claim directed to computer instructions embodied in a signal is not statutory
under 35 U.S.C. § 101. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007).
“A transitory, propagating signal . . . is not a ‘process, machine,
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manufacture, or composition of matter.’ Those four categories define the
explicit scope and reach of subject matter patentable under 35 U.S.C. § 101;
thus, such a signal cannot be patentable subject matter.” Id. Further, a
“claim that covers both statutory and non-statutory embodiments . . .
embraces subject matter that is not eligible for patent protection and
therefore is directed to non-statutory subject matter.” U.S. Patent &
Trademark Office, Interim Examination Instructions for Evaluating Subject
Matter Eligibility Under 35 U.S.C. § 101, Aug. 24, 2009, available at
http://www.uspto.gov/web/offices/pac/dapp/opla/2009-08-
25_interim_101_instructions.pdf.
Claims 18-20 recite a “computer program product including computer
usable program code embodied on a computer usable medium for searching
a database.” Given their broadest reasonable interpretation, claims 18-20 do
not preclude the “computer program product” from being a transitory,
propagating signal. We find no definition or other disclosure in the
Specification that would lead to a different interpretation of the term.
Indeed, the Specification states that the computer usable medium can be any
apparatus that can “contain, store, communicate, propagate or transport” a
computer program, such as a “propagation medium.” Spec. ¶¶ 41-42.
Accordingly, we construe claims 18-20 as embracing a transitory,
propagating signal, and therefore directed to non-statutory subject matter.
We enter a new ground of rejection of claims 18-20 under 35 U.S.C. § 101
as being directed to non-statutory subject matter.

CONCLUSION
The Examiner erred in rejecting claims 1-16 and 18-20 under 35
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U.S.C. § 102(b) and in rejecting claim 17 under 35 U.S.C. § 103(a). We
enter a new ground of rejection for claims 18-20 as being directed to non-
statutory subject matter under 35 U.S.C. § 101.

DECISION
For the above reasons, the rejection of claims 1-16 and 18-20 under
35 U.S.C. § 102(b) and the rejection of claim 17 under 35 U.S.C. § 103(a)
are reversed. We newly reject claims 18-20 as being directed to non-
statutory subject matter under 35 U.S.C. § 101.

This decision contains a new ground of rejection pursuant to
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 CFR § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal 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 § 41.52 by the Board upon the same record. . . .
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).

REVERSED; 37 C.F.R. § 41.50(b)
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