Ex Parte Pricer et al

Board of Patent Appeals and Interferences

Mar 7, 2012

09752355 (B.P.A.I. Mar. 7, 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.
09/752,355 12/29/2000 James E. Pricer 9226 8429
26890 7590 03/07/2012
JAMES M. STOVER
TERADATA CORPORATION
10000 INNOVATION DRIVE
DAYTON, OH 45342
EXAMINER
STRANGE, AARON N
ART UNIT PAPER NUMBER
2448
MAIL DATE DELIVERY MODE
03/07/2012 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 JAMES E. PRICER and FRANK R. GROENEN

Appeal 2010-0019591
Application 09/752,355
Technology Center 2400
____________________

Before JEAN R. HOMERE, DEBRA K. STEPHENS, and
JAMES R. HUGHES, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Teradata Corp. (App. Br. 2.) In an Opinion
(2006-1055) dated June 19, 2006, an earlier panel affirmed the Examiner’s
rejection of claims 1-15 as being unpatentable over the combination of
Muret and Tsuchida.
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-24. (App. Br. 4.) We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
Appellants’ Invention
Appellants invented a method and system for tracking user actions on
the Internet. (Spec. 1, ll. 20-21.) In particular, a plurality of parallel
processing modules (205) load into respective data storage facilities (210)
located in a data warehouse (150) user data obtained from a plurality of
transaction logs (130) maintained by corresponding Internet servers (120).
The obtained data contains various information entries pertaining to the user
including the user’s identification, request entries submitted by the user, and
the time such requests were submitted on the various servers. The
processing modules subsequently execute a query in parallel against their
respective storage facilities using a difference database management
function to select data entries associated with a particular user during a
single session. (Fig. 1-3, Spec. 3, ll. 7-26.)
Illustrative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A method for use in tracking the actions of an Internet
user, the method comprising:

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loading data from a plurality of transaction logs of a
plurality of Internet servers into a database system managed by
plural parallel processing modules, where the data includes an
entry for each request to the Internet server, including
information identifying which user submitted the request and
information identifying the time at which the request was
received; and

executing a database query across the parallel processing
modules using a moving difference database management
function to select from the data all entries associated with a
particular user and corresponding to a single session of that
user.
Prior Art Relied Upon
Tsuchida US 6,026,394 Feb. 15, 2000
(Filed Sep. 4, 1998)
Muret US Patent App. Pub. No.: 2002/0042821 A1 Apr. 11, 2002
(Effectively filed Oct. 4, 1999)
Miller WO 00/20998 Apr. 13, 2000
(Filed Oct. 1, 1999)
Rejection on Appeal
The Examiner rejects claims 1-24 stand rejected under 35 U.S.C. § 103
(a) as being unpatentable over the combination of Muret, Tsuchida, and
Miller.
ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the principal Brief, pages 13-27.

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Representative Claim 1
Dispositive Issue: Have Appellants shown that the Examiner erred in
finding that the combination of Muret, Tsuchida, and Miller teaches or
suggests “executing a database query across parallel processing modules
using a moving difference database management function to select from the
data all entries associated with a particular user and corresponding to a
single session of that user,” as recited in independent claim 1?
Appellants argue that Miller discloses a moving difference function
for calculating a moving difference of an expression when rows are sorted
by a sort expression list. According to Appellants, the disclosed moving
difference function is not used to select data entries pertaining to a user
single session. (App. Br. 14-16.)
In response, the Examiner submits that Appellants’ arguments are not
persuasive because they constitute an individual attack against the
references. According to the Examiner, Miller’s moving difference
function, when taken in combination with the Muret-Tsuchida system,
teaches the disputed limitations. (Ans. 12-13.) In particular, the Examiner
finds that a person of ordinary skill in the art would have recognized that
that Miller’s moving difference function could have been used to select data
from a database such as Muret’s to thereby permit quickly and easily
locating entries therefrom. (Id. at 13.)
We agree with the Examiner. We note at the outset that Appellants do
not dispute our earlier finding in the previous Opinion that the Muret-
Tsuchida combination teaches executing a database query across parallel
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processing modules to select from the data all entries associated with a
particular user and corresponding to a single session of that user. (Op. 6-9.)
Rather, Appellants’ arguments dispute the Examiner’s finding that Miller’s
moving difference database management function is capable of being used
to perform the functions recited in the claim.
In resolving this dispute, we first note that the disputed limitation as
emphasized above is a mere statement of intended use. Our reviewing Court
has held that a statement of intended use in an apparatus claim cannot
distinguish over a prior art apparatus that discloses all the recited limitations
and is capable of performing the recited function. See In re Schreiber, 128
F.3d 1473, 1477 (Fed. Cir. 1997). We also note that “[a]n intended use or
purpose usually will not limit the scope of the claim because such statements
usually do no more than define a context in which the invention operates.”
Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d
1339, 1345 (Fed. Cir. 2003). Although “[s]uch statements often . . . appear
in the claim's preamble,” a statement of intended use or purpose can appear
elsewhere in a claim. In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987).
Even if we were to consider the statement of intended use, we find
that the statement of intended use in the present appeal is fully met by the
prior art structures, which appear to be capable of performing the recited
function. In particular, we find that the moving difference function
disclosed in Miller is used as a tool for performing data mining of
applications in a relational database. (Abst., p. 25, ll. 26-34.) Therefore, one
of ordinary skill would have readily appreciated that it is capable of being
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used to select certain data entries designated to be mined in the database.
Further, we have not found on the record before us any evidence, nor have
Appellants shown,2 that Miller’s moving difference function is incapable of
being used for selecting specified data entries in a database. Consequently,
because Miller’s moving difference function is structurally identical to that
in the claimed invention,3 we find that absent any evidence to the contrary,
the disclosed moving difference function is capable of being used to select
designated data entries in a database.
Furthermore, given our finding that the Muret-Tsuchida combination
teaches that the plurality of parallel processing modules are executing a
query in parallel to select from a database data entries pertaining to a user in
a single session, the ordinarily skilled artisan would have readily appreciated
that using Miller’s moving difference function to help facilitate such
selection of entries would only require routine skill in the art.

2 See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“Jung argues that the
Board gave improper deference to the examiner’s rejection by requiring
Jung to ‘identif[y] a reversible error’ by the examiner, which improperly
shifted the burden of proving patentability onto Jung. Decision at 11. This
is a hollow argument, because, as discussed above, the examiner established
a prima facie case of anticipation and the burden was properly shifted to
Jung to rebut it. . . . ‘[R]eversible error’ means that the applicant must
identify to the Board what the examiner did wrong . . . .”).

3 We note that while claim 1 is directed to a method, because it is argued
together with apparatus claim 11, which also recites the disputed limitations,
our analysis with regard to intended use in an apparatus claim still applies to
the method of claim 1.
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Additionally, in considering the general form of Appellants’
arguments in the principal Brief, we note that one cannot show
nonobviousness by attacking the references individually where the rejections
are based on combinations of references. In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986). Here, the respective references relied on by the
Examiner must be read, not in isolation, but for what the combination
teaches or suggests when considered as a whole. Because Appellants attack
the cited references separately, we find Appellants’ arguments unpersuasive
of Examiner error. Therefore, based upon our review of the record, we
agree with and adopt the Examiner’s underlying factual findings and
ultimate legal conclusion of obviousness regarding claim 1.
Therefore, we find unpersuasive Appellants’ argument that the
combination of Muret, Tsuchida, and Miller does not teach or suggest the
disputed limitations. It follows that Appellants have not shown error in the
Examiner’s conclusion that the proffered combination renders claim 1
unpatentable.
Claims 2-24 (not argued separately) fall therewith. See 37 C.F.R.
§ 41.37(c)(1)(vii).
DECISION
We affirm the Examiner’s rejection of claims 1-24.
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
Vsh