Ex Parte Dettinger et al

Patent Trial and Appeal Board

Nov 10, 2014

12145584 (P.T.A.B. Nov. 10, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte RICHARD D. DETTINGER and FREDERICK A. KULACK

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Appeal 2012-007268
Application 12/145,584
Technology Center 2100
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Before CARLA M. KRIVAK, JOHNNY A. KUMAR and
CATHERINE SHIANG, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–4, 6–12, 14–17, and 19–23. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm-in-part.
In reaching the decision, we have considered only the arguments
Appellants actually raised. Arguments Appellants did not make are deemed
to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).

STATEMENT OF THE CASE
The present invention relates to data processing. See generally Spec.
1. Claim 1 is exemplary:
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1. A computer-implemented method for retrieving query
results comprising:
receiving, from a requesting entity, a first abstract query
comprising one or more logical fields defined by a first data
abstraction model comprising a plurality of first logical field
definitions mapped to physical fields of a first database in a first
device,
wherein one or more of the first logical fields definitions
associate respective first logical fields to respective concepts of
a predefined set of concepts, the concepts being metadata the
metadata being subject to a standard;
converting the first abstract query to a second abstract
query comprising one or more logical fields defined by a
second data abstraction model, the conversion comprising, for
each logical field of the first abstract query, determining a
corresponding logical field in the second data abstraction
model, the corresponding logical field being associated with a
same concept as the logical field of the first abstract query,
wherein the second data abstraction model comprises a
plurality of second logical field definitions mapping the second
logical fields to physical fields of a second database in a second
device, wherein one or more of the second logical fields
definitions associate respective second logical fields to
respective concepts of the predefined set of concepts;
issuing the second abstract query against the second
database to retrieve results for the second abstract query; and
providing the results of the second abstract query to the
requesting entity.

THE REJECTIONS
Claims 1, 8, and 14 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter that Appellants regard as the invention.
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Application 12/145,584

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Claims 1, 2, 4, 6–9, 11, 12, 14, 15, 17, and 19–23 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Tabbara (US 6,460,043 B1;
Oct. 1, 2002) and Ciccarelli (US 6,009,422; Dec. 28, 1999).
Claims 3, 10, and 16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tabbara, Ciccarelli, and Ferrari (US 2002/0083039 A1;
June 27, 2002).

ISSUES
Under 35 U.S.C. § 103, has the Examiner erred by finding Tabbara,
Ciccarelli collectively teach
“converting the first abstract query to a second abstract query,”
as recited in claim 1?

ANALYSIS
The Rejection under 35 U.S.C. § 112, Second Paragraph
Claims must “particularly point[] out and distinctly claim[] the subject
matter which the applicant regards as his invention.” 35 U.S.C. § 112,
second paragraph.
[W]e read § 112, ¶2 to require that a patent’s claims, viewed in
light of the specification and prosecution history, inform those
skilled in the art about the scope of the invention with
reasonable certainty. The definiteness requirement, so
understood, mandates clarity, while recognizing that absolute
precision is unattainable. The standard we adopt accords with
opinions of this Court stating that “the certainty which the law
requires in patents is not greater than is reasonable, having
regard to their subject-matter.”
Nautilus, Inc. v. Biosig Instruments, Inc, 134 S.Ct. 2120, 2129 (2014
(citations omitted)).
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Application 12/145,584

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Because Appellants waived arguments against the Examiner’s
rejection, we summarily sustain the Examiner’s rejection of claims 1, 8, and
14 under 35 U.S.C. § 112, second paragraph.1

The Obviousness Rejection
We have reviewed Appellants’ arguments in the Briefs, the
Examiner’s rejection, and the Examiner’s response to Appellants’
arguments. We concur with Appellants’ conclusion that the Examiner erred
in finding Tabbara and Ciccarelli collectively teach “converting the first
abstract query to a second abstract query,” as recited in claim 1.2 We agree
with Appellants that the Examiner erred for the reasons stated by Appellants.
See Reply Br. 3.
Accordingly, we do not sustain the Examiner’s rejection of claim 1
and for similar reasons, claims 2–4, 6–12, 14–17, and 19–23.

DECISION
The Examiner’s decision rejecting claims 1, 8, and 14 under 35 U.S.C.
§ 112, second paragraph is affirmed.
The Examiner’s decision rejecting claims 1–4, 6–12, 14–17, and 19–
23 under 35 U.S.C. § 103 is reversed.

1 If further prosecution occurs, the Examiner may consider whether
dependent claims of claims 1, 8, and 14 should also be rejected under 35
U.S.C. § 112, second paragraph to maintain consistency. The issue is
probably going to be moot since Appellants have offered to amend the
claims to overcome the rejection.
2 Appellants raise additional arguments. Because the identified issue is
dispositive of the appeal, we do not need to address the additional
arguments.
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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-IN-PART

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