Ex Parte Petculescu et al

Board of Patent Appeals and Interferences

Jun 4, 2009

10402026 (B.P.A.I. Jun. 4, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CRISTIAN PETCULESCU and AMIR NETZ
____________________

Appeal 2008-002859
Application 10/402,026
Technology Center 2100
____________________

Decided:1 June 4, 2009
____________________

Before ALLEN R. MACDONALD, Vice-Chief Administrative Patent Judge,
ST. JOHN COURTENAY III, and JAMES R. HUGHES, Administrative
Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-36 and 42-48. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).
We AFFIRM-IN-PART.

Appellants’ Invention
Appellants invented a system and method for automatically generating
and building (automating the generating and building of) dimensional
models utilizing simplified analysis heuristics. One embodiment of the
invention is a data analysis system including an automated structure labeling
system and an automated model building system. The automated structure
labeling system utilizes simplified analysis heuristics to automatically define
a dimensional model based on data interrelations from a relational data
schema (relational database). The automated model building system
automatically constructs the dimensional model defined by the automated
structure labeling system. (Spec. 3, ll. 27-29 and 8, l. 10 to 10, l. 27.)2

2 We refer to Appellants’: Specification (“Spec.”); Appeal Brief
(Supplemental Appeal Brief) (“App. Br.”) dated June 27, 2007; and Reply
Brief (“Reply Br.”) dated November 9, 2007. We also refer to the
Examiner’s Answer (“Ans.”) mailed September 11, 2007.
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Claims
Independent claim 1 illustrates the invention and reads as follows:
1. A data analysis system, comprising:
an automated structure labeling system utilizing
simplified analysis heuristics for automatically defining a
dimensional model based on data interrelations from a
relational data schema; and
an automated model building system for automatically
constructing the dimensional model defined by the automated
structure labeling system.

Reference
The Examiner relies on the following reference as evidence of
unpatentability:
Microsoft, MS SQL Server 7.0 OLAP Services, published (updated)
July 19, 2001, posted at the Microsoft Technet Library web site, available at:
http://technet.microsoft.com/en-us/library/cc966398.aspx (hereinafter
“Microsoft”) (previously available at
http://www.microsoft.com/technet/prodtechnol/sql/70/maintain/olap.mspx
(2006)).

Rejections
The Examiner rejects claims 1-36 and 42-48 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
The Examiner rejects claims 28-30 and 42-48 under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
The Examiner rejects claims 1-36 and 42-48 under 35 U.S.C. § 102(b)
as being unpatentable over Microsoft.

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Appellants’ Contentions
Appellants contend that the Examiner improperly rejected the claims.
Appellants firstly contend the claimed subject matter is statutory subject
matter (under § 101) because it provides “useful, concrete and tangible
results” as described in State Street and AT&T, and is software code that in
itself constitutes patentable subject matter as described in Eolas Techs., Inc.
v. Microsoft Corp. (App. Br. 5-7.)
Secondly, Appellants contend that claims 28-30 and 42-48 are not
indefinite (under 35 U.S.C. § 112, second paragraph). (App. Br. 8-9.)
Thirdly, Appellants contend that Microsoft does not disclose
“utilizing simplified analysis heuristics for automatically defining a
dimensional model” or “automatically constructing the dimensional model.”
(App. Br. 10-11 (emphasis omitted).)

Examiner’s Findings and Conclusions
The Examiner concluded the subject matter of claims 1-36 and 42-48
is non-statutory subject matter (under § 101) because it does not provide a
useful, concrete and tangible result. (Ans. 3.)
The Examiner also concluded that claims 28-30 and 42-48 are
indefinite (under 35 U.S.C. § 112, second paragraph). (Ans. 3-4.)
The Examiner found that Microsoft discloses each feature of
Appellants’ claimed invention. Specifically, the Examiner found that
Microsoft discloses “an automated structure labeling system utilizing
simplified analysis heuristics for automatically defining a dimensional
model based on data interrelations from a relational data schema . . . and an
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automated model building system for automatically constructing the
dimensional model defined by the automated structure labeling system.”
(Ans. 4 (citations omitted).)

ISSUES
“Rather than reiterate the positions of parties in toto, we focus on the
issue therebetween.” Ex parte Filatov, No. 2006-1160, 2007 WL 1317144,
at *2 (BPAI Apr. 20, 2007). Therefore, based on Appellants’ contentions, as
well as the findings and conclusions of the Examiner, the issues before us
are as follows.
1. Did Appellants establish that the Examiner erred in determining
that the claimed subject matter (claims 1-36 and 42-48) is non-statutory
subject matter?
2. Did Appellants establish that the Examiner erred in
determining that claims 28-30 and 42-48 are indefinite?
3. Did Appellants establish that the Examiner erred in determining
that Microsoft discloses each feature of Appellants’ invention, in particular,
utilizing simplified analysis heuristics for automatically defining a
dimensional model, then automatically constructing the dimensional model?

FINDINGS OF FACT (FF)
We find that the following enumerated findings are relevant to the
rejections under review and are supported by at least a preponderance of the
evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
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(explaining the general evidentiary standard for proceedings before the
Office).
Appellants’ Invention
1. Appellants invented a system and method that automates the
generating and building of dimensional models utilizing simplified analysis
heuristics. (Spec. 3, ll. 27-29.)
2. One embodiment of Appellants’ invention is a data analysis
system that includes an automated structure labeling system and an
automated model building system. The automated structure labeling system
automates the process of defining a dimensional model (based on data
interrelations from a relational data schema) utilizing simplified analysis
heuristics. The automated model building system automatically constructs
the dimensional model defined by the automated structure labeling system.
(Spec. 3, ll. 27-29 and 8, l. 10 to 10, l. 27.)
3. Appellants’ invention involves on-line analytical processing
(OLAP) systems for analyzing data. (Spec. 2, ll. 13-20.) OLAP systems
require a dimensional model or “cube” to perform data analysis. (Spec. 2, ll.
21-30; 3, ll. 1-11; 7, ll. 6-11.)
4. Appellants’ invention “allows for automatically defining a
model and allowing a user to change a definition interactively before
building the model.” (Spec. 4, ll. 4-5.) Appellants’ invention automates the
process of defining a dimensional model while allowing user interaction
with the model definition process – simplifying the model definition process
and reducing the level of skill involved. Put simply, “automatically defining
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a model” involves user interaction in the process. (Spec. 3, l. 29 to 4, l. 20;
7, ll. 19-30; 11, ll. 4-21; 13, ll. 22-27; 14, ll. 10-23; Figs. 3, 6-21.)

Microsoft Reference
5. Microsoft describes the OLAP services component of
Microsoft’s SQL Server version 7.0. OLAP services perform OLAP
analysis with reduced cost and complexity. (Microsoft 1, ¶¶ 1-4.)
6. Microsoft provides a detailed overview of OLAP systems and
the OLAP dimensional models. (Microsoft 3-5.)
7. We note that heuristics are problem solving methods utilizing
exploration and trial and error (e.g., playing chess) to provide a framework
for solving a problem in contrast an algorithmic solution (a clearly specified
procedure that always produces a correct answer) that cannot (by definition)
vary. Put simply, a heuristic is a rule (or set of rules) or method for
approaching a solution.
8. Microsoft describes heuristics employed by OLAP services.
Microsoft describes using metadata (data on the data within the database) to
determine relationships among data. These heuristics include the rules for
determining entities and relationships in the dimensional model, such as the
hierarchy of levels and the implied relationships among each of the
dimensions and levels to the dimensional models’ fact table and its various
measures. (Microsoft 2, ¶ 4; 4, ¶¶ 4-5, and 7; 5, ¶¶ 1-2; 6, ¶ 2; 7, ¶ 4 to 8, ¶
4.) Microsoft also explicitly discusses using heuristics for intelligent
preaggregation. (Microsoft 10, ¶ 4 to 11, ¶ 4.)
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9. Microsoft describes user interface wizards for cube
(dimensional model) creation. (Microsoft 8, ¶¶ 2-4.) Such wizards
automate at least a portion of the dimensional model definition process –
OLAP services provides “[a] full complement of wizards . . . for automating
the most common activities, such as creating a dimension definition.”
(Microsoft 8, ¶ 3.)
10. Microsoft describes user interface wizards for storage and
preaggregation containing (programmed with) heuristics. (Microsoft 10, ¶¶
3-6.)
11. Microsoft describes creating “virtual cubes.” The virtual cubes
are created automatically by joining two or more previously defined
dimensional models (cubes) sharing one or more common dimensions.
(Microsoft 11, ¶ 4.)

PRINCIPLES OF LAW
Burden on Appeal
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006).

Patent-Eligible Subject Matter
The Court of Appeals for the Federal Circuit’s recent In re Bilski
decision clarified the bounds of patent-eligible subject matter for process
claims. See In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc). The en
banc Bilski court held that “the machine-or-transformation test, properly
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applied, is the governing test for determining patent eligibility of a process
under § 101.” Bilsky, 545 F.3d at 956. The Bilski court further held that
“the ‘useful, concrete and tangible result’ inquiry is inadequate [to determine
whether a claim is patent-eligible under § 101.]” Id. at 959-60.
The Bilski court, following Supreme Court precedent,3 enunciates the
machine-or-transformation test as follows: “A claimed process is surely
patent-eligible under § 101 if: (1) it is tied to a particular machine or

3 The Bilski court, citing numerous Supreme Court precedents, stated:

The Supreme Court . . . has enunciated a definitive test to
determine whether a process claim is tailored narrowly enough
to encompass only a particular application of a fundamental
principle rather than to pre-empt the principle itself. A claimed
process is surely patent-eligible under § 101 if: (1) it is tied to a
particular machine or apparatus, or (2) it transforms a particular
article into a different state or thing. See Benson, 409 U.S. at
70 (“Transformation and reduction of an article ‘to a different
state or thing’ is the clue to the patentability of a process claim
that does not include particular machines.”); Diehr, 450 U.S. at
192 (holding that use of mathematical formula in process
“transforming or reducing an article to a different state or thing”
constitutes patent-eligible subject matter); see also Flook, 437
U.S. at 589 n.9 (“An argument can be made [that the Supreme]
Court has only recognized a process as within the statutory
definition when it either was tied to a particular apparatus or
operated to change materials to a ‘different state or thing’”);
Cochrane v. Deener, 94 U.S. 780, 788 (1876) (“A process is ...
an act, or a series of acts, performed upon the subject-matter to
be transformed and reduced to a different state or thing.”).

Bilski, at 954. See Diamond v. Diehr, 450 U.S. 175 (1981); Parker v. Flook,
437 U.S. 584 (1978); Gottschalk v. Benson, 409 U.S. 63 (1972); Cochrane v.
Deener, 94 U.S. 780 (1876).
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apparatus, or (2) it transforms a particular article into a different state or
thing.” Id. at 954; see also In re Comiskey, 554 F.3d 967, 978 (Fed. Cir.
2009) (discussing the same test from Diehr, 450 U.S. 175).
Process claims directed to fundamental principles – including laws of
nature, natural phenomena, and abstract ideas – mental processes, or
mathematical algorithms are unpatentable. Bilski, 545 F.3d at 951-52.

Indefiniteness
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted). During prosecution, claims need not be “insolubly ambiguous” to
be considered indefinite under 35 U.S.C. § 112, second paragraph. Instead,
we may consider claims amenable to two or more plausible claim
constructions to be indefinite, as follows.
[W]e employ a lower threshold of ambiguity when reviewing a
pending claim for indefiniteness than those used by post-
issuance reviewing courts. In particular, rather than requiring
that the claims are insolubly ambiguous, we hold that if a claim
is amenable to two or more plausible claim constructions, the
USPTO is justified in requiring the applicant to more precisely
define the metes and bounds of the claimed invention by
holding the claim unpatentable under 35 U.S.C. § 112, second
paragraph, as indefinite.

Ex parte Miyazaki, No. 2007-3300, slip. op. at 11, 12 (BPAI Nov. 19, 2008)
(precedential).
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Both our reviewing Court and this Board have noted that:
a different standard for indefiniteness may be appropriate
during prosecution of patent claims. See Exxon Research and
Engineering Co. v. U.S., 265 F.3d 1371, 1384 (Fed. Circ. 2001)
(“If this case were before an examiner, the examiner might well
be justified in demanding that the applicant more clearly define
UL, and thereby remove any degree of ambiguity. However, we
are faced with an issued patent that enjoys a presumption of
validity.”) Accordingly, we adopt this lower threshold standard
of ambiguity for indefiniteness for claims during prosecution in
keeping with the USPTO’s broadest reasonable interpretation
standard for claim construction.

Miyazaki, at 13, 14.

Anticipation
Anticipation is a question of fact. In re Schreiber, 128 F.3d 1473,
1477 (Fed. Cir. 1997). Anticipation is determined by first construing the
claims and then comparing the properly construed claims to the prior art. In
re Cruciferous Sprout Litigation, 301 F.3d 1343, 1346 (Fed. Cir. 2002). We
determine the scope of the claims in patent applications not solely on the
basis of the claim language, but upon giving claims “their broadest
reasonable interpretation consistent with the specification” and “in light of
the specification as it would be interpreted by one of ordinary skill in the
art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004).
Under 35 U.S.C. § 102, “[a] claim is anticipated only if each and
every element as set forth in the claim is found, either expressly or
inherently described, in a single prior art reference.” Verdegaal Bros., Inc.
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v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987); see Perricone
v. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation
omitted). However,
[t]he law of anticipation does not require that the
reference ‘teach’ what the subject patent teaches.
Assuming that a reference is properly ‘prior art,’ it
is only necessary that the claims under attack, as
construed by the court, ‘read on’ something
disclosed in the reference, i.e., all limitations of the
claim are found in the reference, or ‘fully met’ by
it.”
Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772 (Fed. Cir. 1983); see
Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed. Cir. 1999)
(quoting Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 781 (Fed.
Cir. 1985)) (“Anticipation of a patent claim requires a finding that the claim
at issue ‘reads on’ a prior art reference.”). In an appeal from a rejection for
anticipation, the Appellants must explain which limitations are not found in
the reference. See Gechter v. Davidson, 116 F.3d 1454, 1460 (Fed. Cir.
1997).
ANALYSIS
Rejection of claims 1-36 and 42-48 under 35 U.S.C. § 101
The Examiner rejects claims 1-36 and 42-48 under 35 U.S.C. § 101,
as non-statutory subject matter because Appellants’ claims recite a
“computer program” and “appear to be merely a representation of data.”
(Ans. 3.) The Examiner also rejects claims 47 and 48 because the claims
“recite a device but are dependent upon a system and method claim,” which
“represents a statutory conflict.” (Ans. 3.) Appellants, however, assert that
claims 8-27 are patentable processes, producing a useful, concrete, and
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tangible result. (App. Br. 5) Appellants also assert that claims 1-7 and
28-36 produce a useful, concrete, and tangible result. (App. Br. 5.) In
addition, Appellants argue that claims 1-36 and 42-48 are patentable subject
matter as software per se (computer code) based on the Eolas Techs., Inc. v.
Microsoft Corp. case. (App. Br. 6-7.) We affirm the Examiner’s § 101
rejection of claims 1-36 and reverse the Examiner’s § 101 rejection of
claims 42-48 for the reasons that follow.
We first address the Examiner’s § 101 rejection of claims 8-27 (the
method or process claims). Section 101 recites four categories of patent-
eligible subject matter: processes, machines, manufactures, and
compositions of matter.4 Appellants’ claims 8-27 recite methods
(processes). A process is “patent-eligible under § 101 if: (1) it is tied to a
particular machine or apparatus, or (2) it transforms a particular article into a
different state or thing.” Bilski, 545 F.3d at 954. Here, Appellants’ method
claims do not invoke a machine, and recite strictly functional limitations.
Claims 8-27 do not recite the methods in terms of hardware or tangible
structural elements. Instead, the claims recite strictly functional limitations
that fail to serve as structural limitations because (1) they are not “means”
recitations subject to interpretation under 35 U.S.C. § 112, sixth paragraph,
and (2) they would not have been understood in the art as implying any
particular structure. Thus, Appellants claims fail the first prong of the

4 “Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.” 35 U.S.C. § 101.
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machine-or-transformation test because they are not tied to a particular
machine or apparatus.
Appellants’ claims 8-27 also fail the second prong of the machine-or-
transformation test because the data acted on by the processes does not
represent physical and tangible objects. Appellants’ claims 8-27 do not
transform physical subject matter. The purported transformation of data,
without a machine, is insufficient to establish patent-eligibility under § 101.
See Bilski, 545 F.3d at 961 (“[E]ven a claim that recites ‘physical steps’ but
neither recites a particular machine or apparatus, nor transforms any article
into a different state or thing, is not drawn to patent-eligible subject
matter.”). Rather, Appellants’ data represents information about an abstract
dimensional model, which is intangible. The claims are directed to abstract
ideas and/or data structures (software) per se. Because the software does not
transform a tangible article, the claims do not recite statutory subject matter.
Accordingly, based on the record before us, claims 8-27 fail the machine-or-
transformation test, and are not patent-eligible process claims.
We next address the Examiner’s § 101 rejection of Appellants’
software patentability contentions and Appellants’ claims 1-7 and 28-36.
We note that Appellants do not separately argue claims 1-7 and 28-36 (App.
Br. 5-6), and we do not separately address these claims. Appellants argue
that all their claims are patentable as software code per se based on the Eolas
Techs., Inc. v. Microsoft Corp. case. (App. Br. 6-7.) Appellants, quoting a
single sentence in Eolas, assert that Eolas stands for a new rule that software
in itself is patent eligible. We do not agree – Appellants misconstrue Eolas.
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Eolas states that “[w]ithout question, software code alone qualifies as
an invention eligible for patenting under these categories, at least as
processes.” Eolas Techs., Inc. v. Microsoft Corp., 399 F.3d 1325, 1339
(Fed. Cir. 2005) (citing In re Alappat, 33 F.3d 1526 (Fed.Cir.1994); AT&T
Corp. v. Excel Communications, Inc., 172 F.3d 1352 (Fed. Cir. 1999)
(abrogated by Bilski, 545 F.3d 943)). In particular, we note that the quoted
language in Eolas is dicta within a discussion of “whether software code
made in the United States and exported abroad is a ‘component[ ] of a
patented invention’ under section 271(f).” Eolas, 399 F.3d at 1338-39.
Software in itself, with no structural tie to an article of manufacture,
machine, process or composition of matter, is not patentable subject matter.
See In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007) (A claim directed to
computer instructions embodied in a signal is not statutory under 35 U.S.C.
§ 101). Cf. In re Lowry, 32 F.3d 1579, 1583-84 (Fed. Cir. 1994) (a claim to a
data structure stored on a computer readable medium that increases
computer efficiency held statutory). Patentable subject matter must fall
within one of the categories set out in § 101. See FN 4 (supra). “Those
four categories define the explicit scope and reach of subject matter
patentable under 35 U.S.C. § 101….” Nuijten, 500 F.3d at 1359. Software
(a data processing program) alone does not belong to one of those
categories. Thus, for all the reasons set forth supra, Appellants have not
established that the Examiner erred in determining that claims 1-7 and 28-36
are non-statutory subject matter.
Lastly, we address the Examiner’s § 101 rejection of Appellants’
claims 42-48. Appellants’ claims 42-46 recite a “computer readable media
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storing computer executable components of a system. . . .” Appellants’
claim 47 recites a “device employing the method of claim 8. . . .”
Appellants’ claim 48 recites a “device employing the system of claim 1. . . .”
Appellants do not separately argue these claims. Even so, we analyze these
claims separately under § 101 because they recite a computer readable
medium or a device.
When broadly construed in a manner consistent with Appellants’
Specification, the claimed “computer readable media” limits the scope of the
claimed media to tangible media embodiments such as the disclosed “hard
disk,” “removable magnetic disk,” “CD,” “magnetic cassettes,” and “flash
memory cards.” (Spec. 18, ll. 19-27.) Similarly, claims 47 and 48 recite a
device. Accordingly, we disagree with the Examiner that claims 42-48 are
“merely a representation of data.”
Also as to claims 47 and 48, 35 U.S.C. § 101 does not provide a basis
for rejecting claims based on a “statutory conflict” due to the incorporation
of a method or system into a device as recited in claims 47 and 48,
respectively. Rather, if confusion exists due to a mixing of statutory
categories of invention, then a rejection under § 112, second paragraph, may
be appropriate. See IPXL Holdings, L.L.C., Amazon.com, Inc., 430 F.3d
1377, 1383-84 (Fed. Cir. 2005).
We reverse the Examiner’s § 101 rejection of Appellants’ claims 42-
48 on these bases. It should be understood, however, that we reverse the
Examiner’s § 101 rejection of claims 42-48 based solely on the Examiner’s
incorrect findings that these claims merely represent data or represent a
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statutory conflict. Our reversal should not be construed as finding that these
claims encompass statutory subject matter.

Rejection of claims 28-30 and 42-48 under 35 U.S.C. § 112,
Second Paragraph
The Examiner has rejected claims 28-30 and 42-48 for being
indefinite for failing to particularly point out and distinctly claim the
invention. We note that, as argued by Appellants (App. Br. 9), claims 47
and 48 do not depend from claim 42 (the claim rejected under § 112, 2nd
para.). Accordingly, we view the inclusion of claims 47 and 48 as a
typographical error in the rejection and reverse the rejection with respect to
claims 47 and 48.
Claim 28 includes the limitation language “means for
programmatically.” Appellants concede that the “means for
programmatically” performing the recited functions are software
implemented means – “[o]ne possessing ordinary skill in the art in this case
would understand ‘programmatically,’ in the case of software as here, to
mean as performed by the program or software product as opposed to
another entity.” (App. Br. 9.) In our analysis of claim 28 under 35 U.S.C.
§ 112, second paragraph we consider two recent cases from the Court of
Appeals for the Federal Circuit, Aristocrat Tech. Australia Pty Ltd. v. Int’l
Game Tech., 521 F.3d 1328 (Fed. Cir. 2008) and Finisar Corp. v. The
DirectTV Group, 523 F.3d 1323 (Fed. Cir. 2008). Both Aristocrat and
Finisar relate to computer-implemented means-plus-function claim
limitations that invoke 35 U.S.C. § 112, sixth paragraph. In Aristocrat, the
court held that the corresponding structure in the specification must be more
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than a general purpose computer or microprocessor with appropriate
programming to satisfy the definiteness requirements of 35 U.S.C. § 112,
second paragraph. Aristocrat, at 1333-34. This is because a general purpose
computer or microprocessor can be programmed to perform very different
tasks and does not limit the scope of the claim to any particular structure that
performs the function. Id., at 1333. In Finisar, the court explained that
reciting software without providing some detail about the means to
accomplish the function does not adequately disclose the corresponding
structure that define the bounds of the invention. Finisar, 523 F.3d at 1340-
41 (“the patent must disclose, at least to the satisfaction of one of ordinary
skill in the art, enough of an algorithm to provide the necessary structure
under § 112, ¶ 6. This court permits a patentee to express that algorithm in
any understandable terms including as a mathematical formula, in prose, see
In re Freeman, 573 F.2d 1237, 1245-46 (CCPA 1978), or as a flow chart, or
in any other manner that provides sufficient structure.”).
We agree with the Examiner that Appellants fail to provide a specific
description of how data can programmatically define or build a model
(without some explicit description of the specific software (executable code)
that defines and builds the model). Therefore, we conclude that claim 28 is
indefinite. Claims 29 and 30 depend from claim 28 and are also indefinite.
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Claim 425 requires the selection of one element from the group
consisting of an automated structure labeling system, an automated model
building system, an input, and an output. The automated model building
system refers to “the automated structure labeling system,” and the input
refers to both “the automated structure labeling system” and “the automated
model building system.” We agree with the Examiner that elements within
the claim lack antecedent basis (Ans. 3-4.) Because only one element need
be selected, for example the input, the other elements (in this example, the

5 Claim 42 recites:
42. A computer readable medium storing computer
executable components of a system for facilitating data
analysis, comprising an automated data analysis system that
provides information associated with a data set, based, at least
in part, upon at least one selected from the group consisting of:
an automated structure labeling system utilizing
simplified analysis heuristics for automatically defining a
dimensional model based on data interrelations from a
relational data schema;
an automated model building system for automatically
constructing a dimensional model defined by the automated
structure labeling system;
an input to initiate via a single user action at least one
selected from the group consisting of the automated structure
labeling system and the automated model building system;
an output associated with an interface to provide
indications of data processing of the automated data analysis
system; and
an input associated with an interface to influence
automated data processing based, at least in part, on a user's
preference of at least one selected from the group consisting of
a how to define a dimensional model and how to construct a
dimensional model.

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automated structure labeling system and the automated model building
system) lack antecedent basis. Therefore, we conclude that claim 42 is
indefinite. Claims 43-46 depend from claim 42 and are also indefinite.
Thus, for all the reasons set forth supra, Appellants have not established that
the Examiner erred in determining that claims 28-30 and 42-46 are
indefinite.

Rejection of claims 1-36 and 42-48 under 35 U.S.C. § 102(b)
The Examiner rejects claims 1-36 and 42-48 under 35 U.S.C. § 102(b)
as being clearly anticipated by Microsoft (Ans. 4). We note that where a
claim (and its terms) are so indefinite that “considerable speculation as to
meaning of the terms employed and assumptions as to the scope of such
claims” is needed, a rejection (under § 102(b)) is likely imprudent. See In re
Steele, 305 F.2d 859, 862 (CCPA 1962) (holding that the Examiner and the
board were wrong in relying on what at best were speculative assumptions
as to the meaning of the claims and basing a rejection under 35 U.S.C. § 103
thereon.) In the instant appealed claims we find that we need not speculate
as to the meaning the term “programmatically” of claims 28-30 in order to
reach a decision on the patentability of the claimed subject matter in view of
the applied art – thus, this rejection is not imprudent.
Appellants contend that: (1) Microsoft is not a proper § 102(b)
reference (App. Br. 10); (2) Microsoft does not disclose “utilizing simplified
analysis heuristics for automatically defining a dimensional model” (App.
Br. 10 (emphasis original)); and (3) Microsoft does not disclose
“automatically constructing the dimensional model” (App. Br. 11
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21
(emphasis original)). The Examiner, conversely, contends that Microsoft is
a proper reference (Ans. 17) and discloses each feature of Appellants’ claims
(Ans. 4, 17-19). We will affirm the Examiner’s rejection of claims 1-36 and
42-48 for the reasons that follow.
We first address if Microsoft is a proper § 102(b) reference. “If there
are no facts in dispute, whether a reference is a prior art ‘printed publication’
within the meaning of 35 U.S.C. § 102(b) is a question of law.” Cordis
Corp. v. Boston Scientific Corp., 561 F.3d 1319, 1332-33 (Fed. Cir. 2009)
(citing In re Klopfenstein, 380 F.3d 1345, 1347 (Fed. Cir. 2004)).
Appellants contend that Microsoft is not a proper § 102(b) reference because
“[t]he dates of publication of allegedly relevant sections of the OLAP Article
are not definable,” and because MPEP § 2128 does not allow a reliance on
the revision date as the publication date (App. Br. 9-10.) The Examiner,
however, contends that a publication date (“in the form of a revision date”)
has been provided and Appellants provide no contradictory evidence. (Ans.
17.) We agree with the Examiner that Appellants have provided no evidence
calling the revision date into question. Appellants merely speculate that this
electronic document may have been altered without updating the revision
date, they do not provide any evidence that Microsoft was in fact revised
after the revision date (printed on Microsoft’s front page). Accordingly, we
conclude that the revision date of July 19, 2001, is the date of publication of
Microsoft. We also conclude that MPEP § 2128 supports (rather than
forecloses) our reliance on the revision as the publication.
Appellants’ invention is a system (and method) that automates the
generating and building of OLAP dimensional models (“cubes”) utilizing
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22
simplified analysis heuristics. (FF 1, 3.) One embodiment of Appellants’
invention is a data analysis system including an automated structure labeling
system – which automates the process of defining a dimensional model
utilizing simplified analysis heuristics – and an automated model building
system – which automatically constructs the dimensional model defined by
the automated structure labeling system. (FF 2.) Appellants’ system
automates at least a portion of dimensional model definition process, while
allowing user interaction with the process. (FF 4.)
Microsoft provides a detailed overview of OLAP systems and OLAP
dimensional models, and describes heuristics employed by OLAP systems.
(FF 5, 6, 8.) In particular, Microsoft describes heuristics such as using
metadata to determine relationships among data in a database, rules for
determining entities and relationships in the dimensional model (such as the
hierarchy of levels and the implied relationships among each of the
dimensions and levels to the dimensional models’ fact table and its various
measures), and heuristics for intelligent preaggregation. (FF 8, 10.) We
note that heuristics are merely problem solving methods (sets of rules) for
approaching a solution. (FF 7.) Appellants do not require employing any
particular heuristics in the model definition process.
Microsoft also discloses automating defining the dimensional model
and automating constructing the dimensional model. Microsoft describes
user interface wizards for dimensional model creation, including wizards for
storage and preaggregation programmed with heuristics. (FF 9, 10.)
Microsoft also describes automatically creating “virtual cubes” by joining
two or more previously defined dimensional models. (FF 11.)
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Microsoft, therefore, discloses a structure labeling system utilizing
simplified heuristics for defining a dimensional model based on data
interrelations from the relational data schema. The structure labeling system
is automated; it automatically defines at least a portion of the dimensional
model. Microsoft also describes an automated dimensional model building
system that constructs virtual cubes from previously defined models.
Accordingly, we find that the Examiner correctly demonstrates that
Microsoft discloses “utilizing simplified analysis heuristics” for
“automatically defining” a dimensional model, as well as “automatically
constructing” the dimensional model – Appellants provide no persuasive
evidence to support the assertion that Microsoft does not disclose these
limitations as required by Appellants’ claims.

CONCLUSION OF LAW
On the record before us, we find: (1) Appellants do not establish that
the Examiner erred in determining that claims 1-36 are non-statutory subject
matter, but do establish that the Examiner erred in determining that claims
42-48 are non-statutory subject matter; (2) Appellants do not establish that
the Examiner erred in determining that claims 28-30 and 42-46 are
indefinite; and (3) in determining that Microsoft discloses each feature of
Appellants’ invention, in particular, utilizing simplified analysis heuristics
for automatically defining a dimensional model, then automatically
constructing the dimensional model.

Appeal 2008-002859
Application 10/402,026

24
DECISION
We affirm the Examiner's rejection of claims 1-36 and 42-48 under
§ 102(b).
We affirm the Examiner's rejection of claims 1-36 under § 101.
However, we reverse the Examiner's rejection of claims 42-48 under § 101.
We affirm the Examiner's rejection of claims 28-30 and 42-46 under
§112, second paragraph, and we reverse the Examiner's rejection of claims
47 and 48 under §112, second paragraph.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN PART

rwk

Himanshu S. Amin
Amin & Turocy, LLP
National City Center, 24th Floor
1900 E. 9th Street
Cleveland, OH 44114