Ex Parte Demarcken et al

Board of Patent Appeals and Interferences

Nov 9, 2010

10457016 - (D) (B.P.A.I. Nov. 9, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CARL G. DEMARCKEN and JUSTIN A. BOYAN
____________

Appeal 2009-015107
Application 10/457,016
Technology Center 3600
____________

Before JOHN A. JEFFERY, HUBERT C. LORIN, and JOSEPH A.
FISCHETTI, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING1
Appellants request that we reconsider our decision of August 25, 2010
(“Op.”) where we affirmed the Examiner’s rejection of claims 1-57.
We have reconsidered our decision in light of Appellants’ arguments
in the Request for Rehearing, but we decline to change the decision for the
following reasons.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Application 10/457,016

2
The Anticipation Rejection of Claim 1
Appellants first contend that our finding regarding Fay pertaining to
the recited feature of claim 1 calling for “‘a query cache that stores results
comprising flights and fares usable with the flights’ is not supported by
substantial evidence.” Req. 1-2. Specifically, Appellants allege that we
improperly ignored these recited features in finding that this limitation
comprises non-functional descriptive material. Req. 2-3. Appellants add
that we overlooked Fay’s excluding storing results comprising flights and
fares usable with the flights. Id.
We disagree. As we indicated in our decision, the types of results
stored by the recited query cache, namely flights and fares usable with the
flights, constitute non-functional descriptive material since these results
merely pertain to the stored data’s informational content. Op. 8-9. We
emphasize the term “results” here, for we did not find the query cache to
comprise non-functional descriptive material as Appellants seem to suggest,2
but rather the content of the data stored by that cache (i.e., the results
comprising flights and fares usable with the flights). Id. Simply put, the
recited query cache stores results (data) whose content is specified as
“flights and fares usable with the flights.” And it is this data content that we
found to be non-functional descriptive material. Id.
Despite Appellants’ arguments to the contrary (Req. 3-4), the cases
we cited in our opinion amply support our finding in this regard. For

2 See Req. 3 (“[T]he Board did not make any findings pertaining to why it
considered ‘a query cache that storing results comprising flights and fares
usable with the flights,’ as non-functional descriptive material . . . .”)
(emphasis added); see also id. (alleging that the cases relied on by the Board
are irrelevant to drawing a similar conclusion regarding the query cache).
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example, we cited Ex parte Nehls, 88 USPQ2d 1883 (BPAI 2008)
(precedential)3 which held that certain sequence ID numbers (SEQ ID NOS)
stored in a data storage means were non-functional descriptive material since
the numbers were merely information manipulated by a computer. Nehls, 88
USPQ2d at 1888-89. Notably, the Board held that the recited sequences
were not functionally related to the computer system to perform the recited
comparison since the computer performed this function regardless of
whether the database included the recited sequence numbers. Id. In
reaching this conclusion, the Board noted that the sequence numbers were
analogous to the non-functional printed kit instructions in In re Ngai, 367
F.3d 1336 (Fed. Cir. 2004)—another case that we cited in our opinion. See
Op. 8 n.4.
Notably, the Board in Nehls cited two other cases, Ex parte Curry4
and Ex parte Mathias,5 where the Federal Circuit affirmed the Board’s
holdings that the nature of the information manipulated by a computer does
not patentably distinguish over an otherwise unpatentable computer-
implemented product or process. Nehls, 88 USPQ2d at 1889.
These holdings are particularly applicable where, as here, the
computer’s testing the wider query to determine a “valid result” in claim 1
does not depend on the particular content of the data to perform that
function. Indeed, this “valid result” could very well be a result other than

3 See Op. 8 n.4 (citing Nehls).
4 Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005), aff’d (Fed. Cir. No. 2006-
1003, June 12, 2006).
5 Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005), aff’d 191 Fed. App. 959
(Fed. Cir. 2006).
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“flights or fares usable with the flights” given the open-ended term
“comprising” following the term “results” in claim 1.6
Appellants’ contention that this descriptive material is allegedly
functionally related to the method (Req. 3-4) is unavailing. Unlike the data
structures in In re Lowry, 32 F.3d 1579, 1583-84 (Fed. Cir. 1994) which
were physical entities that imposed a particular physical organization on the
stored data to increase computer operation efficiency, the recited “flights or
fares usable with the flights” are merely informational content of the stored
data which are not functionally related to the recited process as noted
above—the very essence of non-functional descriptive material.
And it is this point that was central to our decision in affirming the
Examiner’s rejection over Fay. Appellants, however, contend that Fay
specifically excludes storing “results comprising flights and fares usable
with the flights” in light of Fay’s stated preference for storing only flight
availability data for subscriber identifications (SIDs) and airline carrier
codes (CCs) that are configured to use the cache database 50. Req. 2.
Notwithstanding the fact that Fay indicates that this storage option is merely
a preference—not a mandate7—we nonetheless squarely addressed the
possibility that fare data may not be stored in Fay’s cache database despite

6 “‘Comprising’ is a term of art used in claim language which means that the
named elements are essential, but other elements may be added and still
form a construct within the scope of the claim.” Genentech, Inc. v. Chiron
Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) (citation omitted).
7 See Fay, col. 6, ll. 6-9 (“The cache database 50 is preferably SID and CC
specific and configured to only store flight availability data for SIDs and
CCs that have been configured to use the cache database 50.”); see also FF 8
(citing related passage indicating Fay’s preferred storage of flight
availability data) (emphases added).
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the advanced search tool’s requesting data stored from that database. Op. 8-
9. But as we indicated in the opinion, this distinction is immaterial to the
anticipation rejection of claim 1 since the content of the information stored
in the recited query cache does not patently distinguish over the data
retrieved from Fay’s cache database. Id.
We therefore remain unpersuaded of error in the Examiner’s
anticipation rejection of claim 1 for the reasons noted above and in the
opinion.

The Anticipation Rejection of Claim 5
We reach a similar conclusion regarding our decision affirming the
Examiner’s rejection of claim 5. Appellants argue that we allegedly ignored
claim 5’s filtering of results that are already retrieved from the cache (i.e.,
“valid cached results”) to eliminate answers in the cached result. Req. 6.
But as we indicated in the decision, we found this limitation fully met
by Fay’s retrieval of particular information to construct itineraries in
accordance with search criteria since that process would effectively “filter”
information that did not meet the query’s restrictions. Op. 10-11. Notably,
this “filtering” would apply not only to a particular set of data on which the
query was initially applied (e.g., the cache as a whole), but also subsets of
that data (e.g., valid cached results) since those results would likewise omit
the filtered information. Appellants’ arguments (Req. 6) are simply not
commensurate with the scope of the claim.
We therefore remain unpersuaded of error in the Examiner’s
anticipation rejection of claim 5 for the reasons noted above and in the
opinion.
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CONCLUSION
For the foregoing reasons, we have granted Appellants’ request to the
extent that we have reconsidered our decision of August 25, 2010, but we
deny the request with respect to making any changes therein.
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).

REHEARING DENIED

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