Ex Parte Santosuosso

Board of Patent Appeals and Interferences

Mar 12, 2012

11424268 (B.P.A.I. Mar. 12, 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.
11/424,268 06/15/2006 John M. Santosuosso ROC920040191US1 7309
46797 7590 03/13/2012
IBM CORPORATION, INTELLECTUAL PROPERTY LAW
DEPT 917, BLDG. 006-1
3605 HIGHWAY 52 NORTH
ROCHESTER, MN 55901-7829
EXAMINER
PHAN, TUANKHANH D
ART UNIT PAPER NUMBER
2163
MAIL DATE DELIVERY MODE
03/13/2012 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 2010-001882
Application 11/424,268
Technology Center 2100
____________

Before SCOTT R. BOALICK, JOHN A. JEFFERY, and
ANDREW CALDWELL, Administrative Patent Judges.

CALDWELL, Administrative Patent Judge.

DECISION ON APPEAL

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Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-7 and 9-25. Claim 8 is cancelled. We have jurisdiction under 35
U.S.C. § 6(b).
We reverse.

STATEMENT OF THE CASE
Appellant’s claimed invention is directed to a computer-implemented
method for managing execution of a query against data in a database where a
query is iteratively executed against different samples of a database (Spec. ¶
[0017]). Independent claim 1, reproduced below, is illustrative with key
disputed limitations emphasized.
1. A computer-implemented method for managing
execution of a query against a database having a
multiplicity of data records, comprising:
receiving, from a requesting entity, a query against
the database; and
performing an automated execution process,
comprising:
(i) iteratively executing the query against
different samples of the database, each sample
including a different subset of the multiplicity of data
records;
(ii) after each iterative execution of the query,
determining whether a query result obtained for the
iterative execution satisfies a predefined condition;
and
(iii) if the predefined condition is not satisfied,
performing a predefined action.

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REJECTION
The Examiner rejected claims 1-7 and 9-25 under 35 U.S.C. § 102(e)
as being anticipated by Covannon (US 2007/0168315 A1; July 19, 2007,
filed Jan. 3, 2006). Ans. 3-9.

CONTENTIONS
The Examiner finds that Covannon discloses a method for managing
execution of a query against a multi-record database with every recited
feature of independent claim 1 including iteratively executing the query
against different database samples, where each sample includes a different
subset of the database’s records. Ans. 3-4, 9-11.
Appellant disputes these findings, contending that not only does
Covannon’s iteratively execute different queries, they are executed against
the same data source—not a different data source. Br. 13-15. As such,
Appellants contend, a query is not executed against different data record
subsets as claimed. Id. The issue before us, then, is as follows:

ISSUE
Under § 102, has the Examiner erred in rejecting claim 1 by finding
that Covannon iteratively executes a query against different database
samples, where each sample includes a different subset of the database’s
records?

ANALYSIS
We begin by noting that although the Examiner has consistently found
that Covannon anticipates the claimed invention, the Examiner’s reasoning
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has changed during the prosecution of this application. In the Final
Rejection of independent claims 1 and 13, the Examiner points to Figure 13
and cites various paragraphs of the text. See Final Rej. 3-4. In response to
the Final Rejection, Appellant filed a Request for Reconsideration and
presented arguments without any amendment to the claims. In response to
the Request for Reconsideration, the Examiner mailed an Advisory Action
indicating that Appellant’s arguments were unpersuasive. See Adv. Action
1-2 mailed Dec. 19, 2008. In the Advisory Action, the Examiner appears to
have changed the rationale as to why Covannon teaches the limitation of
iteratively executing a query against different samples of a database. The
Advisory Action points to Covannon’s paragraph 131 and Figure 16 rather
than Figure 13 as before. In the Appeal Brief, Appellant presents the same
arguments that were made to the Examiner in the Request for
Reconsideration. Compare App. Br. 10-16 with Req. Recons. 10-17 filed
Dec. 10, 2008. In other words, the Appeal Brief presents arguments with
respect to the Examiner’s rationale in the Final Rejection citing Covannon’s
Figure 13 as opposed to the Advisory Action citing Covannon’s Figure 16.
In the Answer, however, the Examiner changed the citations in the rejection
from Figure 13 to Figure 16. Compare Ans. 3 with Fin. Rej 3.
Independent claims 1, 13, and 25 include the limitation of iteratively
executing the query against different samples of the database, each sample
including a different subset of the multiplicity of data records. We agree
with Appellant that Covannon does not teach this limitation.
With respect to the Examiner’s rationale in the Final Rejection citing
Figure 13, we agree with Appellant’s reasoning on pages 10-16 of the
Appeal Brief.
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With respect to the Examiner’s new rationale in the Answer citing
Figure 16, we find that Covannon does not teach iteratively executing the
query against different samples of the database. Rather, Covannon teaches
iteratively modifying a query that is run against the same set of data records.
The Examiner cites “the node” referred to in Covannon’s Figure 16 and
paragraphs 95 and 96 as evidence that a query is executed against different
samples of the database (Ans. 10). The node referred to in the citation is a
narrative node that is “a subset of content data files that is required for the
narrative” (Covannon ¶ 95 (emphases added)). A narrative could be, for
example, a slide show of a person’s European vacation pictures. One
narrative node of the slide show could include pictures, or content data files,
taken while in London while another narrative node could include pictures
taken while in Paris. The process described in Figure 16 uses the content
data files of a narrative node (i.e., the London pictures) to create additional
inferential queries that are executed against a content database in order to
find context data files (Covannon ¶¶ 131, 138). The context data files are
used to enhance the material (i.e., content data files) already in the narrative
and associated with the narrative node. Although Figure 16 describes
iteration over narrative nodes, we fail to see why the query for one iteration
(i.e., London) would necessarily be the same as the query for another
iteration (i.e., Paris). Furthermore, we fail to see any persuasive evidence in
Covannon that a query is ever executed against less than all of the content
database. The Examiner’s reasoning is therefore unpersuasive.
Nor are we persuaded of the Examiner’s contention that it is
purportedly “old and well known” that folders are iteratively searched one
after another when searching for a file. Ans. 10. Reliance on what is “old
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and well known” is more appropriate for an obviousness determination—not
anticipation. That is, the Examiner has not provided sufficient evidence of
inherency and, on this record, we cannot say that Covannon necessarily
iteratively searches different directories consecutively as the Examiner
asserts—a crucial requirement for inherent anticipation.1 Whether such a
feature may be obvious over Covannon in light of such a technique is not a
question before us. Nor will we engage in that inquiry here in the first
instance on appeal.
We are therefore constrained by the record before us to find that
Covannon does not iteratively execute a query against different samples of a
database, each sample including a different subset of the multiplicity of data
records. It follows that Appellant has persuaded us of error in the
Examiner’s anticipation rejection of independent claims 1, 13, and 25 and
claims 2-7, 9-12, and 14-24, which depend therefrom. Since this issue is
dispositive of our reversing the Examiner’s rejection of these claims, we
need not address Appellant’s additional argument regarding modifying a
query after interruption. Br. 16.

DECISION
The Examiner’s decision rejecting claims 1-7 and 9-25 is reversed.

REVERSED

1 “Inherency . . . may not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of circumstances is
not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999)
(citations omitted).

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