Ex Parte Feeney et al

Board of Patent Appeals and Interferences

Jul 18, 2012

11473617 (B.P.A.I. Jul. 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.
11/473,617 06/23/2006 Martin J. Feeney EMS-129US 7605
52427 7590 07/19/2012
MUIRHEAD AND SATURNELLI, LLC
200 FRIBERG PARKWAY, SUITE 1001
WESTBOROUGH, MA 01581
EXAMINER
PHAN, TUANKHANH D
ART UNIT PAPER NUMBER
2163
MAIL DATE DELIVERY MODE
07/19/2012 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 MARTIN J. FEENEY, OFER MICHAEL,
RONALD G. HAUPERT, and DOUGLAS E. LECRONE
________________

Appeal 2010-003602
Application 11/473,617
Technology Center 2100
________________

Before MAHSHID D. SAADAT, KRISTEN L. DROESCH, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL

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This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
1

The Invention
“This application relates to computer storage devices, and more
particularly to the field of efficiently using computer storage devices to
perform data operations.” (Spec., p. 1, ll. 3-5, “Technical Field”).
Exemplary Claim
Independent claim 1 is representative of the invention and is
reproduced below (emphasis added to contested limitations):
1. A method of handling a database request, comprising:
providing a first database manager within a storage device
containing data for the database;
generating the database request external to the storage device;
providing the database request to the first database manager on
the storage device; and
the first database manager servicing the database request by
obtaining data from within the storage device and processing
the data within the storage device to provide a result thereof
containing less data than data accessed by the first database
manager to obtain the result, wherein all of the data used in
connection with servicing the database request is accessed by

1
Throughout this Decision, we refer to the Appeal Brief (App. Br.) filed
May 15, 2009; the Examiner’s Answer (Ans.) mailed Sep. 17, 2009; the
Reply Brief (Reply Br.) filed Oct. 22, 2009; the Final Office Action (FOA)
mailed Jan. 6, 2009; and the originally-filed Specification (Spec.).
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the first database manager from the data contained within the
storage device, and wherein the first database manager
processes the data accessed from the storage device
independently of data external to the storage device to obtain
the result.
Prior Art
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Zehner US 2007/0005564 A1 Jan. 4, 2007
(filed Nov. 1, 2005)
Nguyen US 2002/0040398 A1 Apr. 4, 2002
Rejections on Appeal
A. The Examiner has rejected claims 1-7, 9, 12-15, and 17-19
under 35 U.S.C § 102(e) as being anticipated by Zehner (Ans. 3-5).
B. The Examiner has rejected claims 8, 10, 11, 16, and 20 under
35 U.S.C § 103(a) as being unpatentable over Zehner in view of Nguyen
(Ans. 6-7).
GROUPING OF CLAIMS
Based upon Appellants’ arguments, we select representative claim 1
to decide this appeal (App. Br. 7-12). To the extent that any separate
arguments are made by Appellants with respect to dependent claims rejected
under 35 U.S.C. § 103(a), these arguments merely assert that the secondary
Nguyen reference does not make up for any argued deficiencies of the
primary Zehner reference. (App. Br. 14). We therefore do not treat
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Appellants’ assertions in this regard as a “separate argument,” such that all
claims on appeal stand or fall together with independent claim 1.
We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants could have made but chose not
to make in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(vii)(2009).
PRINCIPLES OF LAW
The Federal Circuit has outlined how the prima facie case burden for
anticipation is met, and its purpose. Specifically, “the prima facie case is
merely a procedural device that enables an appropriate shift of the burden of
production.” Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007). This
burden is met by “adequately explain[ing] the shortcomings it perceives so
that the applicant is properly notified and able to respond.” Id, at 1370. It is
only “when a rejection is so uninformative that it prevents the applicant from
recognizing and seeking to counter the grounds for rejection” that the prima
facie burden has not been met and the rejection violates the minimal
requirements of 35 U.S.C. §132. Chester v. Miller, 906 F.2d 1574, 1578
(Fed. Cir. 1990).
ISSUES
35 U.S.C § 102(e): Claims 1-7, 9, 12-15, and 17-19
Appellants contend that the Examiner has failed to establish a prima
facie case under 35 U.S.C. § 102(e) of claims 1-7, 9, 12-15, and 17-19 as
being anticipated by Zehner. (App. Br. 7).
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More specifically, Appellants contend:
[T]he Examiner suggests that paragraph [0042] of Zehner
is merely one embodiment disclosed in Zehner, and then cites
to the general description in paragraph [0013] of Zehner in
rejecting Appellants' claims. Appellants point out, however,
that Zehner's paragraph [0013] discusses use of "role" and
"rating" information of web sites used in connection with
searching the directory database of site information in response
to a user inquiry. This information is described by Zehner as
allowing for the elimination of nonrelevant matches from
search results in Zehner's system. In paragraph [0042], Zehner
then discusses the advantages of Zehner's system of using
predetermined reputation information to provide more accurate
search results. Appellants note that the role and rating
information that is used by Zehner as the basis for a search of
the directory database to eliminate non relevant matches is
discussed in paragraph [0013] (the paragraph of Zehner cited in
the Final Office Action) and, indeed, is further discussed in
detail throughout Zehner (see, for example, paragraphs [0032],
[0042], [0043], [0044], [0045], [0046], [0055], [0056], [0058],
[0060], [0065], [0074], [0076], [0087], [0091], [0107], [0112],
[0131], [0134], among other locations in Zehner).
App. Br. 9.
Appellants also contend “that Zehner's searching system does not
teach or fairly suggest at least the features of all of the data used in
connection with servicing the database request is accessed by the first
database manager from the data contained within the storage device, and
wherein the first database manager processes the data accessed from the
storage device independently of data external to the storage device to obtain
the result, as recited by Appellants.” (App. Br. 10-11).

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Appellants further contend the following:
[P]aragraph 0033 cited by the Examiner does not address
or overcome the above-noted deficiencies of Zehner that have
been pointed out with respect to Appellants' presently claimed
invention. Paragraph [0033], and further paragraph [0036], of
Zehner indicates that program modules may be located in both
local and remote memory storage as part of the operations of
distributed computing. Regardless of the use of distributed
computing in Zehner, Appellants refer to the above-noted
discussions of Zehner concerning the use of role and rating
information of web sites in connection with searching a
directory of web sites prepared from a site crawl of Internet
web sites to provide a web address in response to a query of a
user. Appellants submit that the references to distributed
computing in Zehner, in particular involving both local and
remote devices, do not disclose at least the features recited by
Appellants, and discussed in detail above, involving all of the
data used in connection with servicing the database request
being accessed by the first database manager from the data
contained within the storage device, and wherein the first
database manager processes the data accessed from the storage
device independently of data external to the storage device to
obtain the result.
App. Br. 12.
Issue on Appeal
Appellants’ arguments present us with the issue: Did the Examiner
err in finding that Zehner discloses every limitation of Appellants’ claimed
invention, particularly that Zehner discloses “wherein all of the data used in
connection with servicing the database request is accessed by the first
database manager from the data contained within the storage device, and
wherein the first database manager processes the data accessed from the
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storage device independently of data external to the storage device to obtain
the result”?
Analysis
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions with respect to claims 1-7, 9, 12-15, and 17-19. We adopt as
our own (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken and (2) the reasons and rebuttals set forth by
the Examiner in the Examiner’s Answer (Ans. 3-5 and 7-8) in response to
Appellants’ Arguments (App. Br. 7-12; Reply 3-7). We concur with the
conclusions reached by the Examiner.
In particular, we concur with the Examiner’s finding that Zehner
discloses “wherein all of the data used in connection with servicing the
database request is accessed by the first database manager from the data
contained within the storage device, and wherein the first database manager
processes the data accessed from the storage device independently of data
external to the storage device to obtain the result,” as recited in
representative claim 1.
In support of the Examiner’s rejection, we find that the limitation at
issue in claim 1 is met by Zehner’s disclosure cited by the Examiner (Ans. 4,
citing to Zehner, ¶ [0013]). In the paragraph cited by the Examiner, Zehner
discloses:
The present invention is a search engine and method of
performing a multi-dimensional search with a computer,
including creating a directory database comprising site
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information, said site information comprising addresses for a
plurality of web sites, a role for each said plurality of web sites,
and a rating for each said plurality of web sites; receiving a
first query; performing a search of said directory database
based on at least one role for each of said plurality of web sites,
and at least one rating for each of said plurality of web sites;
obtaining search results from the search of the directory
database, said search results comprising an address for at least
one of said plurality of web sites; and outputting the search
results.
Zehner ¶ [0013], emphasis added.
Further, Zehner discloses “[t]he invention may also be practiced in
distributed computing environments where tasks are performed by remote
processing devices that are linked through a communications network.”
(Zehner ¶ [0033], emphasis added).
We find that at least the above-cited portions of Zehner disclose that
the data used to service the query is accessed from data contained in the
storage device, regardless of the type of data stored in Zehner, or the
possibility that Zehner’s locally stored data points to outside data, e.g., web
site addresses, etc.
In further support of this position, and in response to Appellants’
argument that “program modules may be located in both local and remote
memory storage as part of the operations of distributed computing” (App.
Br. 12), we note that remote processing is disclosed by Zehner as merely
being an alternative in both paragraphs [0013] and [0036] of Zehner. In this
regard, we also find that the claim language does not preclude additional
search, storage, or retrieval criteria being utilized, as may be found in
Zehner.
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Appellants present arguments regarding purported advantages of
Appellants’ currently claimed invention that are stated as reducing the
transfer of information, and that “the data searched on the storage device is
not a directory of external data, but is all of the data accessed and processed
by a database manager provided on the storage device to provide a result to a
request and is performed independent of external data to the storage device
[. . .] that stores all the data that is searched by the database manager in
response to a request.” (Reply Br. 4).
Appellants’ arguments appear to focus, at least in part, on contrasting
the type of data stored by Appellants in comparison to Zehner (App. Br. 10-
11; Reply Br. 4). However, Appellants’ arguments are not commensurate
with the scope of claim 1. At a fundamental level, and regardless of the type
of data being searched and/or stored by either Zehner or Appellants, we find
that Appellants have not shown that the Examiner has erred in his
interpretation of Zehner, and have not shown that data used to respond to the
query (request) in Zehner is necessarily and only retrieved from outside
Zehner’s storage device.
Based upon the above, we find that Zehner’s disclosure cited by the
Examiner is consistent with the Examiner’s position, as well as the
recitations of claim 1.
Accordingly, we sustain the Examiner’s rejection of claim 1, as well
as claims 2-20 falling therewith.
DECISION
The decision of the Examiner to reject claims 1-20 is affirmed.
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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

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