Ex Parte Malden et al

Board of Patent Appeals and Interferences

Sep 1, 2010

10277549 (B.P.A.I. Sep. 1, 2010)

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.
10/277,549 10/21/2002 Matthew Scott Malden OIC0087US 6870
60975 7590 09/01/2010
CAMPBELL STEPHENSON LLP
11401 CENTURY OAKS TERRACE
BLDG. H, SUITE 250
AUSTIN, TX 78758
EXAMINER
OUELLETTE, JONATHAN P
ART UNIT PAPER NUMBER
3629
MAIL DATE DELIVERY MODE
09/01/2010 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 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte MATTHEW SCOTT MALDEN, DANIEL EDWARD ISRAEL, 8
ROBERT BRENT PINKERTON, FRANK WARREN BISHOP JR., 9
PRASHANT B.PATEL, CHRISTOPHER SCOTT NASH, 10
RAHUL VISWANATHAN, ARUN ABICHANDANI, 11
RAJANI YELKUR, HANG YEE WONG, and JACKSON CHAN 12
___________ 13
14
Appeal 2010-000742 15
Application 10/277,549 16
Technology Center 3600 17
___________ 18
19
Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and 20
BIBHU R. MOHANTY, Administrative Patent Judges. 21
FETTING, Administrative Patent Judge. 22
DECISION ON APPEAL1 23

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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STATEMENT OF THE CASE2 1

2 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed May 15, 2006) and Reply Brief (“Reply Br.,” filed September 8,
2009), and the Examiner’s Answer (“Ans.,” mailed July 6, 2009).
Matthew Scott Malden et al. (Appellants) seek review under 2
35 U.S.C. § 134 (2002) of a non-final rejection of claims 10-17, 28-35, and 3
45-51. Claims 36-44 stand rejected, but are not appealed. We have 4
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) (2002). 5
The Appellants invented a way of analyzing various types of information 6
related to possible security threats and routing that information to 7
appropriate security personnel for further processing and identifying of 8
information that relates to suspect individuals and groups (Specification 2:¶ 9
0004). 10
An understanding of the invention can be derived from a reading of 11
exemplary claim 10, which is reproduced below [bracketed matter and some 12
paragraphing added]. 13
10. A method in a computer system for identifying duplicate 14
records relating to a suspect in an investigation, the method 15
comprising: 16
[1] generating a de-duplication key for each record derived 17
from content of various fields of the record; 18
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[2] determining whether any de-duplication key for a record 1
matches a de-duplication key for another record; and 2
[3] when it is determined that de-duplication keys match, 3
indicating that the records with the matching keys may be 4
duplicates. 5
The Examiner relies upon the following prior art: 6
Introducing Vality Veri-Quest to Identify and Track the Records of Most 7
Wanted Suspects, Business Wire, Monday, November 5, 2001 8
(hereinafter Vality) 9
MathWorld, http://www.mathworld.wolfram.com. (last visited May 10, 10
2000). 11
Claim 10 stands rejected under 35 U.S.C. § 112, second paragraph, as 12
failing to particularly point out and distinctly claim the invention. 13
Claims 10-13, 28-29, 32, 34, 35, 45, 48, and 50-51 and claims 14-17, 30-14
31, 33, 46-47, and 49 stand rejected under 35 U.S.C. § 103(a) as 15
unpatentable over Vality and MathWorld. 16
17
ISSUES 18
The issue of indefiniteness hinges on whether the preamble recitation of 19
a field of use requires steps setting up that use. The issue of obviousness 20
hinges on whether it was predictable to use MathWorld’s hash keys as 21
duplication indicators in Vality’s system. 22
23
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FACTS PERTINENT TO THE ISSUES 1
The following enumerated Findings of Fact (FF) are believed to be 2
supported by a preponderance of the evidence. 3
Facts Related to the Prior Art 4
Vality 5
01. Vality is directed to discussing a product that tracks suspects. 6
Vality: Title. 7
02. Vality states that Veri-Quest's powerful matching capabilities 8
detect duplicate and related records despite anomalous, 9
inconsistent, erroneous, and switched or missing data. The unique 10
Vality statistical matching engine scores the probability that two 11
or more sets of data refer to the same entity – for the highest 12
match accuracy (and lowest number of false matches) even in 13
cases of non-exact matching records, for example, records with 14
name or address variations. Vality: Bottom of first page to top of 15
second page. 16
MathWorld 17
03. MathWorld is directed to explaining hash functions. 18
MathWorld 1: Subtitle. 19
04. MathWorld explains how hash functions can show whether two 20
objects are equal and one such use is to identify fields used to 21
index data. MathWorld 1: Second ¶. 22
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ANALYSIS 1
Claim 10 rejected under 35 U.S.C. § 112, second paragraph, as failing to 2
particularly point out and distinctly claim the invention. 3
The Examiner found that claim 10 omitted steps essential to establishing 4
data relating to a suspect in an investigation. Ans. 10. The Appellants argue 5
that, 6
the language of the claim clearly and precisely indicates that 7
identifying duplicate records relating to a suspect in an 8
investigation comprises generating a de-duplication key for 9
each record, determining whether any de-duplication key for a 10
record matches a de-duplication key for another record, and 11
when it is determined that de-duplication keys match, indicating 12
that the records with the matching keys may be duplicates. 13
Appeal Br. 8. We agree with the Appellants that the steps in the body of 14
the claims “clearly and precisely indicates that identifying duplicate records” 15
is performed by the steps enumerated in the body of the claim. The steps in 16
claim 10 are applicable to any data set; there is nothing in those steps that tie 17
them back to the preamble phrase “for identifying duplicate records relating 18
to a suspect in an investigation.” Accordingly, rather than this preamble 19
phrase requiring steps in the claim body to establish its contents, the 20
preamble is simply a field of use limitation that does not limit the claim. 21
Since this phrase is non-limiting, it cannot create indefiniteness in the claim 22
as found by the Examiner. 23
Claims 10-13, 28-29, 32, 34, 35, 45, 48, and 50-51 rejected under 35 U.S.C. 24
§ 103(a) as unpatentable over Vality. 25
Independent claim 10 recites three steps in finding duplicate records: 26
generating keys to find duplicates, determining which records are duplicates 27
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from those keys, and indicating the duplicates. We initially find that a key is 1
a term of art for an index field.3 Common sense alone dictates that once the 2
need to find duplicates is established, each of these steps necessarily follows, 3
as some mechanism for identifying the fields that constitute duplicative 4
information and some mechanism for determining whether this information 5
is indeed duplicative are absolutely necessary simply by virtue of the nature 6
of the problem and some mechanism for pointing out the result are needed to 7
implement the test. Claim 10 recites no algorithm that would distinguish 8
any particular actual search strategy used to find duplicates. So the issue 9
regarding claim 10 is whether the need to find duplicates is established and 10
whether it was predictable to use keys (index fields) to identify the fields 11
used to find duplicates. 12
Clearly, Vality establishes the need. As the Examiner found at Answer 13
4-5, Vality describes matching capabilities that detect duplicate and related 14
records despite anomalous, inconsistent, erroneous, and switched or missing 15
data. FF 02. As the Examiner also found at Answer 4-5, MathWorld 16
describes the use of hash functions to generate keys that are used to find 17
matches among data. FF 03-04. Since Vality generally describes steps [2] 18
and [3], and MathWorld describes step [1] and applying its results to 19
contexts such as those in step [2] where matches are to be found, the 20
Examiner found it predictable to apply MathWorld’s hash function as the 21
mechanism for generating what are essentially de-duplication keys in 22

3 Paul E. Black, "key", in Dictionary of Algorithms and Data Structures
[online], Paul E. Black, ed., U.S. National Institute of Standards and
Technology. 17 December 2004. (accessed 30 August 2010) Available from:
http://www.itl.nist.gov/div897/sqg/dads/HTML/key.html
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performing Vality’s process. We agree and adopt this analysis and 1
conclusion. 2
The Appellants argue that Vality teaches away from the combination 3
because Vality detects duplicates despite erroneous and switched or missing 4
data. The Appellants contend that with such erroneous or missing data, hash 5
functions are likely to result in different hash values. Appeal Br. 11. We 6
disagree with this conclusion. Vality’s strong ability to find duplicates in 7
spite of such erroneous data simply suggests a hash function that is designed 8
to account for such possibilities, using additional processing for accounting 9
for results within the implied tolerances. 10
As to the Appellants’ arguments regarding motivation to combine and 11
the use of common sense in the analysis, the Appeal Brief predates KSR Int’l 12
Co. v. Teleflex Inc., 550 U.S. 398 (2007). “Helpful insights, however, need 13
not become rigid and mandatory formulas; and when it is so applied, the 14
[teaching-suggestion-motivation] test is incompatible with our precedents.” 15
KSR, 550 U.S. at 419. “Common sense teaches … that familiar items may 16
have obvious uses beyond their primary purposes, and in many cases a 17
person of ordinary skill will be able to fit the teachings of multiple patents 18
together like pieces of a puzzle.” KSR, 550 U.S. at 420. 19
Thus, when common sense suggests applying a widely used technique 20
for identifying data, such as a hash function, to a known problem, such as 21
identifying duplicate records based on data within those records, “a person 22
of ordinary skill has good reason to pursue the known options within his or 23
her technical grasp. If this leads to the anticipated success, it is likely the 24
product not of innovation but of ordinary skill and common sense. In that 25
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instance the fact that a combination was obvious to try might show that it 1
was obvious under § 103.” KSR, 550 U.S. at 421. 2
Claims 12 and 13 recite that the de-duplication keys match when a 3
metric indicates that the de-duplication keys are close enough that they may 4
represent duplicate records. The Examiner found this to be common 5
statistical comparison. Ans. 6. The Appellants argue the Examiner did not 6
show this to be so. Reply Br. 15-16. Here we agree with the Appellants that 7
the references do not discuss any algorithm that applies when the 8
identification of two records does not initially show duplication. The 9
Examiner has not made any findings as to which statistical technique the 10
Examiner refers to, nor, more critically, the notoriety of such technique. 11
The Appellants make arguments similar to those in support of claim 10, 12
in support of the remaining independent claims 28, 36, and 45. The 13
Appellants rely on these arguments for the dependent claims, except for 14
claims 32 and 48 which are similar to claim 12. Thus, we find the 15
Appellants’ arguments for claim 32 and 48 persuasive here for the same 16
reasons as claim 12, but the arguments for the remaining claims 17
unpersuasive for the same reasons as claim 10. 18
Claims 14-17, 30-31, 33, 46-47, and 49 rejected under 35 U.S.C. § 103(a) as 19
unpatentable over Vality and MathWorld. 20
Although this rejection is over the same references as the first rejection, 21
the Examiner found that these claims recited data that were non-functional 22
descriptive material and afforded no patentable weight to the limitations 23
regarding such data. Ans. 8-9. The Appellants argue the data is functional 24
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in that the data is used to generate the de-duplication keys. Appeal Br. 19-1
20. 2
Nonfunctional descriptive material cannot render nonobvious an 3
invention that would have otherwise been obvious. In re Ngai, 367 F.3d 4
1336, 1339 (Fed. Cir. 2004). Cf. In re Gulack, (when descriptive material is 5
not functionally related to the substrate, the descriptive material will not 6
distinguish the invention from the prior art in terms of patentability). 7
The Appellants have not come forward with evidence sufficient to show 8
that the structure of the information, i.e.., the data, is functionally affected or 9
functionally affects something by it being, specifically, names, physical 10
characteristics, addresses or alias names as recited in these claims. Absent 11
such evidence, it was reasonable for the Examiner to conclude that the basic 12
data in a field aspect of the information was descriptive and not functionally 13
related to any structure of the claimed invention and as such fell under the 14
category of patentably inconsequential subject matter. The fact that the 15
claim requires associating an identifier with data such as name and address 16
does not change the fact that the identifier is associated with data but that 17
aspect of the data which is to be a name and address is properly considered 18
to be nonfunctional and descriptive. See Ex parte Curry, 84 USPQ2d 1272, 19
1275 (BPAI 2005) (informative) (“Common situations involving 20
nonfunctional descriptive material are: - a computer-readable storage 21
medium that differs from the prior art solely with respect to nonfunctional 22
descriptive material, such as music or a literary work, encoded on the 23
medium, - a computer that differs from the prior art solely with respect to 24
nonfunctional descriptive material that cannot alter how the machine 25
functions (i.e.., the descriptive material does not reconfigure the computer), 26
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or - a process that differs from the prior art only with respect to 1
nonfunctional descriptive material that cannot alter how the process steps are 2
to be performed to achieve the utility of the invention. Thus, if the prior art 3
suggests storing a song on a disk, merely choosing a particular song to store 4
on the disk would be presumed to be well within the level of ordinary skill in 5
the art at the time the invention was made. The difference between the prior 6
art and the claimed invention is simply a rearrangement of nonfunctional 7
descriptive material.).” See also Ex parte Mathias, 84 USPQ2d 1276 (BPAI 8
2005) (informative). 9
CONCLUSIONS OF LAW 10
Rejecting claim 10 under 35 U.S.C. § 112, second paragraph, as failing 11
to particularly point out and distinctly claim the invention is in error. 12
Rejecting claims 10-11, 28-29, 34, 35, 45, and 50-51 under 35 U.S.C. 13
§ 103(a) as unpatentable over Vality is not in error. 14
Rejecting claims 12-13, 32, and 48 under 35 U.S.C. § 103(a) as 15
unpatentable over Vality is in error. 16
Rejecting claims 14-17, 30-31, 33, 46-47, and 49 under 35 U.S.C. 17
§ 103(a) as unpatentable over Vality and MathWorld is not in error. 18
DECISION 19
To summarize, our decision is as follows. 20
• The rejection of claim 10 under 35 U.S.C. § 112, second paragraph, as 21
failing to particularly point out and distinctly claim the invention is 22
not sustained. 23
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• The rejection of claims 10-11, 28-29, 34, 35, 45, and 50-51 under 1
35 U.S.C. § 103(a) as unpatentable over Vality is sustained. 2
• The rejection of claims 12-13, 32, and 48 under 35 U.S.C. § 103(a) as 3
unpatentable over Vality is not sustained. 4
• The rejection of claims 14-17, 30-31, 33, 46-47, and 49 under 5
35 U.S.C. § 103(a) as unpatentable over Vality and MathWorld is 6
sustained. 7
No time period for taking any subsequent action in connection with this 8
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 9
§ 1.136(a)(1)(iv) (2007). 10
11
AFFIRMED-IN-PART 12
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mev 16
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Address 18
CAMPBELL STEPHENSON LLP 19
11401 CENTURY OAKS TERRACE 20
BLDG. H, SUITE 250 21
AUSTIN TX 78758 22