10920098 (B.P.A.I. Jan. 18, 2012)

Ex Parte Santosuosso

Board of Patent Appeals and InterferencesJan 18, 2012

10920098 (B.P.A.I. Jan. 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. 10/920,098 08/17/2004 John M. Santosuosso ROC920040079US1 6790 46797 7590 01/19/2012 IBM CORPORATION, INTELLECTUAL PROPERTY LAW DEPT 917, BLDG. 006-1 3605 HIGHWAY 52 NORTH ROCHESTER, MN 55901-7829 EXAMINER HICKS, MICHAEL J ART UNIT PAPER NUMBER 2165 MAIL DATE DELIVERY MODE 01/19/2012 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 JOHN M. SANTOSUOSSO ____________________ Appeal 2009-012174 Application 10/920,098 Technology Center 2100 ____________________ Before ERIC S. FRAHM, DENISE M. POTHIER, and DAVID M. KOHUT, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-012174 Application 10/920,098 2 STATEMENT OF CASE Introduction Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 12-18, 31-37, and 41. Claims 1-11, 19-30, and 38-40 have been canceled. We have jurisdiction under 35 U.S.C. 6(b). We affirm. Exemplary Claim Exemplary independent claim 12 under appeal, with emphases added, reads as follows: 12. A method for managing execution of a query against data of a database, comprising: receiving a query against the data of the database, the query having at least one query condition including a user-defined function; determining whether the user-defined function satisfies a predefined deterministic criterion; determining whether cached results are available for the user-defined function; if the cached results are available for the user-defined function, using the cached results in execution of the query against the data of the database to determine a corresponding query result only if the user-defined function satisfies the predefined deterministic criterion; and if no cached results are available, executing the user-defined function, and caching results obtained in execution of the user-defined function. Appeal 2009-012174 Application 10/920,098 3 The Examiner’s Rejections 1. The Examiner rejected claims 12, 14-18, 31, 33-37, and 41 under 35 U.S.C. § 102(b) as being anticipated by Dessloch (US 6,338,056 B1, Jan. 8, 2002).1 Ans. 3-6. 2. The Examiner rejected dependent claims 13 and 32 as being unpatentable under 35 U.S.C. § 103(a) over Dessloch and Barrera (US 2005/0210023 A1, Sep. 22, 2005). Ans. 6-7. The Examiner’s Findings The Examiner finds (Ans. 4 and 8-10) that Dessloch discloses determining whether (1) a query (i.e., user-defined function) satisfies a predefined deterministic criterion at column 10, lines 15-20 and column 12, lines 32-37, and (2) cached results are available for the user-defined function at column 10, lines 21-25. The Examiner reasons that: (1) Dessloch’s determination that a user-defined function (UDF) is defined as a predicate in a query is equivalent to determining whether a UDF satisfies a predefined deterministic criterion (Ans. 9); (2) Dessloch’s index 202 acts as a cache (Ans. 8 and 10); and (3) Dessloch’s determination of whether an index 202 exists for the query is equivalent to determining whether cached results are available for the UDF (Ans. 9-10). 1 Separate patentability is not argued for claims 14-18 and 33-37 rejected under § 102(b) (see generally Br. 11-13; Reply Br. 2-4). Appellant only presents arguments on the merits with regard to independent claims 12, 31, and 41 (see Br. 11 and 13; Reply Br. 2-4). Appeal 2009-012174 Application 10/920,098 4 Appellant’s Contentions 1. Appellant contends (Br. 11-13; Reply Br. 2-4) that the Examiner erred in rejecting independent claims 12, 31, and 41 under 35 U.S.C. § 102(b) for numerous reasons, including: (a) Dessloch fails to disclose the steps of (i) determining whether a UDF satisfies a predefined deterministic criterion, and (ii) determining whether cached results are available for the UDF (App. Br. 11; Reply Br. 2- 4); (b) “the existence of [Dessloch’s] ‘index 202’ cannot be reasonably described as a user-defined function satisfying a predefined deterministic criterion” (App. Br. 12) (emphasis in original); (c) the Examiner improperly interprets the term “deterministic,” which term is properly described in paragraph [0071] of Appellant’s Specification, as a function that always returns a unique value given a unique input value and is the opposite of “random” (App. Br. 12); and (d) Dessloch’s index 202 is not the same as the “cached results” (App. Br. 12-13; Reply Br. 3). 2. Appellant contends (App. Br. 13; Reply Br. 4) that the Examiner erred in rejecting dependent claims 13 and 32 under 35 U.S.C. § 103(a) for the same reasons asserted with respect to the anticipation rejection of claims 12, 31, and 41 above. Notably, Appellant’s Reply Brief fails to address or rebut the Examiner’s position that Dessloch’s determination of a “predicate” as being equivalent to determining whether a UDF satisfies a predefined deterministic criterion (see generally Reply Br. 2-4). Appeal 2009-012174 Application 10/920,098 5 Issue on Appeal Based on Appellant’s arguments, the issue presented on appeal is: Did the Examiner err in rejecting claims 12, 14-18, 31, 33-37, and 41 as being anticipated, and claims 13 and 32 as being obvious, because Dessloch fails to disclose determining whether (a) a user-defined function satisfies a predefined deterministic criterion, and (b) cached results are available for the user-defined function, as recited in claims 12, 31, and 41? ANALYSIS We have reviewed the Examiner’s rejections in light of Appellant’s arguments in the Appeal Brief and Reply Brief that the Examiner has erred. We disagree with Appellant’s conclusions. 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 set forth by the Examiner in the Examiner’s Answer in response to Appellant’s Appeal Brief (see Ans. 3- 7). We concur with the conclusions reached by the Examiner. We agree with the Examiner (Ans. 4 and 8-10) that Dessloch discloses the two determining steps as set forth in claims 12, 31, and 41 on appeal. (See e.g., portions of exemplary claim 12 emphasized in italics supra). Dessloch meets the limitations found in claims 12, 31, and 41 of determining whether: (1) the UDF satisfies a predefined deterministic criterion, and (2) cached results are available for the UDF. Appellant has not shown otherwise. Specifically, we agree with the Examiner that (1) Dessloch’s determination that a UDF is defined as a predicate in a query is equivalent to determining whether a UDF satisfies a predefined deterministic criterion Appeal 2009-012174 Application 10/920,098 6 (see Ans. 9); (2) Dessloch’s index 202 acts as a cache (see Ans. 8 and 10); and (3) Dessloch’s determination of whether an index 202 exists for the query is equivalent to determining whether cached results are available for the UDF (see Ans. 9-10). We disagree with Appellant’s argument that the recitations in claims 12, 31, and 41 of a user-defined function (UDF) fail to encompass Dessloch’s “query,” and thus what Dessloch’s query analysis returns cannot be the same as what a UDF returns (see Reply Br. 3). We also disagree with Appellant’s arguments (App. Br. 13; Reply Br. 4) that the Examiner’s analogies of Dessloch’s (1) index 202 as being equivalent to a cache, and (2) query as being equivalent to a UDF, require that Dessloch’s determination of the existence of an index meets both of the determining steps set forth in claims 12, 31, and 41 (see e.g., portions of exemplary claim 12 emphasized in italics supra). With regard to the first determining step of determining whether a user-defined function satisfies a predefined deterministic criterion, Dessloch’s predicates are cached results for the UDF which are used as an index, similar to Appellant’s disclosure at paragraph [0026] of the Specification that an index is created for the UDF if predefined index applicability criterion are satisfied, and the index is used to execute the query to determine a corresponding query result (Spec. ¶ [0026]). While Appellant recognizes that the Examiner relies upon the predicate determination as teaching or suggesting the step of determining whether a UDF satisfies a predefined deterministic criterion (Reply Br. 2) (quoting Ans. 8-9), Appellant has not disputed the merits of Dessloch’s predicate determination (col. 12, ll. 32-37; see Ans. 4 and 8-9, where Examiner Appeal 2009-012174 Application 10/920,098 7 equates Dessloch’s predicate determination to the recited predefined deterministic criterion) in arguing that Dessloch fails to teach that the UDF satisfies a predefined deterministic criterion (see Reply Br. 3). Accordingly, Appellant has not rebutted the Examiner’s findings with respect to Dessloch’s predicate being equivalent to a predefined deterministic criterion, even taken in light of Appellant’s alleged definition at paragraph [0071] of the Specification. With regard to the second determining step of determining whether cached results are available for the user-defined function, we note that each of claims 12, 31, and 41 on appeal recites that the query has “at least one query condition including a user-defined function” (claims 12, 31, and 41) (emphasis added). In addition, Dessloch describes UDFs as defining operations that can be invoked by queries (col. 6, ll. 15-17). Accordingly, we disagree with Appellant’s arguments (Reply Br. 3) that: (1) Dessloch’s query analysis performed by optimizer 210 being deterministic is irrelevant to whether a UDF is deterministic; (2) what a query analysis returns is not the same as what the UDF returns; and (3) a query and a UDF are not synonymous. Accordingly, we agree with the Examiner that (1) the first determining step of determining whether a user-defined function (i.e., query) satisfies a predefined deterministic criterion (i.e., predicate) is disclosed at column 10, lines 15-20 and column 12, lines 32-37; and (2) the second determining step of determining whether cached results (i.e., index 202) are available for the user-defined function (i.e., query) is disclosed at column 10, lines 21-25 (see Ans. 4 and 8-10). Appeal 2009-012174 Application 10/920,098 8 In view of the foregoing, we agree with the Examiner that Dessloch discloses the two determining steps recited in claims 12, 31, and 41, and we sustain the Examiner’s anticipation rejection of independent claims 12, 31, and 41. We sustain the Examiner’s rejection of dependent claims 14-18 and 33-37 for similar reasons as claims 12 and 31, and because Appellant has not provided separate patentability arguments as to these dependent claims. Regarding the obviousness rejections of claims 13 and 32 as being unpatentable under 35 U.S.C. § 103(a) over Dessloch and Barrera, we disagree with Appellant’s arguments (see App. Br. 13; Reply Br. 4). We agree with the Examiner (Ans. 7) that Barrera (¶ [0070]) discloses determining whether a UDF is associated with a deterministic flag, as recited in claims 13 and 32. Appellant has not shown otherwise. We sustain the rejection of claims 13 and 32 for similar reasons as the rejection of claims 12 and 31 (from which claims 13 and 32 depend, respectively) as provided supra. CONCLUSIONS 1. The Examiner did not err in rejecting claims 12, 14-18, 31, 33-37, and 41 as being anticipated under 35 U.S.C. § 102(b). 2. The Examiner did not err in rejecting claims 13 and 32 as being unpatentable under 35 U.S.C. § 103(a). 3. Claims 12-18, 31-37, and 41 are not patentable. DECISION2 2 We have decided the appeal before us. However, should there be further prosecution of claims 31-37, the Examiner’s attention is directed to recently Appeal 2009-012174 Application 10/920,098 9 The Examiner’s rejections of claims 12-18, 31-37, and 41 are affirmed. 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 ke issued guidance from the Director and our reviewing courts. See In re Nuijten, 500 P.3d 1346 (Fed. Cir. 2007); Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010). We note that paragraph [0029] of Appellant’s Specification best describes the recited computer readable storage medium containing a program as a program product contained on a signal-bearing media such as information conveyed to a computer by a communications medium or downloaded from the Internet and other networks.