Ex Parte Poon et al

Patent Trial and Appeal Board

Apr 11, 2018

14170494 (P.T.A.B. Apr. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/170,494 0113112014 Stanley K. Poon
108431 7590 04/12/2018
Dell c/o Jackson Walker L.L.P.
100 Congress A venue
Suite 1100
Austin, TX 78701
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
102450.00101 (102796.1) 9403
EXAMINER
DANG, THANH HAT
ART UNIT PAPER NUMBER
2163
MAILDATE DELIVERY MODE
04/12/2018 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 PATENT TRIAL AND APPEAL BOARD
Ex Parte STANLEY K. POON, FERDINAND N. SILVA, YAO LU,
PRAHARSH S. SHAH, RAYMOND MILKEY, and
PRABHAT D. TRIPATHI
Appeal2017-009956
Application 14/170,494
Technology Center 2100
Before JASON V. MORGAN, BETH Z. SHAW, and
AARON W. MOORE, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 seek our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 1-20, which represent all the pending
claims. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 Throughout this Decision we have considered the Appeal Brief filed
January 18, 2017 ("App. Br."), Reply Brief filed July 17, 2017 ("Reply
Br."), the Examiner's Answer mailed May 17, 2017 ("Ans."), the Final
Rejection mailed May 18, 2016 ("Final Act."), and the Specification, filed
Jan. 31, 2014 ("Spec.").
2 Appellants identify Dell Products L.P. as the real party in interest. App.
Br. 4.
Appeal2017-009956
Application 14/170,494
INVENTION
Appellants' invention is directed to an ad hoc domain specific query
system and method for an enterprise software environment. Spec. i-f 1.
Claims 1 and 9 are independent. Claim 1 is illustrative of the claims
at issue and is reproduced below:
1. A system for performing an ad hoc query comprising:
a query service operating on a processor and configured to
receive an ad hoc query in a domain-specific language;
a query parsing service operating on the processor and
configured to receive a validate request and a parse request from the
query service and to return a query object to the query service; and
a queryable interface operating on the processor and configured
to receive the query object and to transmit the query object to one or
more framework services for execution, wherein the ad hoc query
contains one or more new key words and the query parsing service
and the queryable interface are configured to add the one or more new
key words if they are located in an associated model in the framework
services.
(App. Br., Claims Appendix, 17.)
REJECTIONS
The Examiner rejected claims 1-16 under 35 U.S.C. § 102(a)(l) as
being anticipated by Freire (US 2006/0080313). Final Act. 3-5.
The Examiner rejected claim 17 under 35 U.S.C. § 103 as being
unpatentable over Freire and Kumar (US 2010/0082632). Final Act. 5-6.
The Examiner rejected claim 18 under 35 U.S.C. § 103 as being
unpatentable over Freire and Bodapati (US 2009/0049010). Final Act. 6-7.
The Examiner rejected claim 19 under 35 U.S.C. § 103 as being
unpatentable over Freire and Golan et al. (US 2015/0134632; hereinafter
"Golan"). Final Act. 7-8.
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Appeal2017-009956
Application 14/170,494
The Examiner rejected claim 20 under 35 U.S.C. § 103 as being
unpatentable over Freire and Grabamik et al. (US 2009/0313202; hereinafter
"Grabamik"). Final Act. 8-9.
ANALYSIS
Appellants argue the Examiner erred in rejecting claim 1 under
35 U.S.C. § 102(b) as being anticipated by Freire. In particular, Appellants
argue Freire does not disclose "the ad hoc query contains one or more new
key words and the query parsing service and the queryable interface are
configured to add the one or more new key words if they are located in an
associated model in the framework services," as recited in claim 1. App. Br.
10-11; Reply Br. 2-3.
We agree with Appellants that the cited portions of Freire (e.g.,
paragraph 51) do not disclose that the ad hoc query includes new key words,
or that the query parsing service and the queryable interface are configured
to add the new key words, if they are located in an associated model in the
framework services. The Examiner finds that one of "ordinary skill in the
art would understand that UPDATE or INSERT query statement[s]
implicitly and/or inherently add 'new key word[s],' and based on [a] broad
interpretation of the claim language, the argued limitation [of a] 'new key
word' could be interpreted as [a] key, attribute, object, data, keyword, or
parameter." Ans. 4. Yet, "[t]o establish inherency, the extrinsic evidence
'must make clear that the missing descriptive matter is necessarily present in
the thing described in the reference, and that it would be so recognized by
persons of ordinary skill."' In re Robertson, 169 F.3d 743, 745 (Fed. Cir.
1999) (quoting Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268
(Fed. Cir. 1991)). "Inherency ... may not be established by probabilities or
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Appeal2017-009956
Application 14/170,494
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient." In re Oelrich, 666 F .2d 578, 581 (CCP A
1981) (citing Hansgirg v. Kemmer, 102 F.2d 212, 214 (1939)).
The missing descriptive matter is not necessarily present based on
paragraph 51 of Freire. Rather, as Appellants point out (Reply Br. 3), it does
not necessarily flow from Freire that storing a new value in a database would
necessarily update a key word based on if the new key word is located in an
associated model in a framework service, as claimed. Therefore, on this
record, the Examiner has not shown sufficiently how Freire anticipates claim
1.
Thus, we are persuaded of error in the Examiner's rejection of claim 1
under 35 U.S.C. § 102(a)(l). Therefore, we do not sustain the§ 102
rejection of claim 1, or of independent claim 9, which recites commensurate
limitations. Dependent claims 2-8 and 10-16 stand with their respective
independent claims. Further, we also do not sustain the Examiner's§ 103
rejections of claims 17-20, because the Examiner does not find that the
additional cited art cures the deficiencies discussed above.
Because these issues are dispositive, we do not reach Appellants'
other prior art arguments.
DECISION
The decision of the Examiner to reject claims 1-20 is reversed.
REVERSED
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