Ex Parte Santosuosso

Board of Patent Appeals and Interferences

Mar 27, 2012

11463623 (B.P.A.I. Mar. 27, 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.
11/463,623 08/10/2006 John M. Santosuosso ROC920030083US2 7248
46797 7590 03/28/2012
IBM CORPORATION, INTELLECTUAL PROPERTY LAW
DEPT 917, BLDG. 006-1
3605 HIGHWAY 52 NORTH
ROCHESTER, MN 55901-7829
EXAMINER
RADTKE, MARK A
ART UNIT PAPER NUMBER
2165
MAIL DATE DELIVERY MODE
03/28/2012 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. SANTOSIOSSO
____________

Appeal 2009-010270
Application 11/463,6231
Technology Center 2100
____________

Before ST. JOHN COURTENAY III, THU A. DANG, and
CAROLYN D. THOMAS, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is International Business Machines Corporation.
Appeal 2009-010270
Application 11/463,623

2

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-9, which are all the claims pending in this
application. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
The present invention relates to enhancing the performance of a client
through the utilization of statistical information regarding the distribution of
requested data to be processed by the client. (Spec., 1 ¶[0002].)
Claim 1 is illustrative:
1. A computer-implemented method for use by a client in
accessing data from a data source wherein the data source contains a
plurality of fields, the method comprising:
obtaining information regarding one or more distinct data
values stored in a field of the plurality of fields of the data source, the
information including at least a byte size of the field; and
requesting, based at least partially on the byte size of the
field, that a server of the data source send representations of the
distinct values rather than actual distinct values, in response to queries
for data from the field;
wherein the requesting causes the server to enable a
respective status flag of the field defined in a column status table, the
column status table including a flag for each field of the plurality of
fields, each flag being independently selectable.

Appellant appeals the following rejection:
Claims 1-9 under 35 U.S.C. § 102(b) as anticipated by Farber (US Pat.
5,978,791, Nov. 2, 1999).

Appeal 2009-010270
Application 11/463,623

3
ANALYSIS
Claims 1-4 and 7
Issue 1: Did the Examiner err in finding that Farber discloses that the
information includes at least a byte size of the field, as set forth in claim 1?

Appellant contends that in Farber there is “nothing regarding a step of
‘obtaining information regarding one or more distinct data values stored in a
field of the plurality of fields of the data source,’ and nothing where the
obtained information includes ‘a byte size of the field.’” (App. Br. 13)
The Examiner found that “Farber uses a hash function to generate a
pseudo-random string of bits based on a file name. Then the byte size of the
field is appended to the hash value.” (Ans. 7-8)(citations omitted.) We
disagree with the Examiner.

Farber discloses that “[a] simple data item is a data item whose size is
less than a particular given size. . . . To determine the True Name of a
simple data item . . . first compute the MD function . . . Then append to the
resulting 128 bits, the byte length modulo 32 of the data item.” (see Farber,
col. 14, ll. 4-10.) The Examiner associates Farber’s appending of the byte
length modulo 32 to the True Name to the claimed obtaining “a byte size of
the field.” However, we find that the Examiner has failed to illustrate how
Farber’s “length modulo 32” is equivalent to a byte size of the field where
distinct data values are stored. Instead, the Examiner is applying a “data
length” as oppose to a field size, given that the Examiner expressly states
that mod 32 is a file size (see Ans. 8). Claim 1 requires a byte size of a field.
Data has several parts that can be divided into fields in a relational database.
Appeal 2009-010270
Application 11/463,623

4
However, the size of the data does not necessarily give you the size of a
field.
"[A]nticipation of a claim under § 102 can be found only if the prior
art reference discloses every element of the claim . . . ." In re King, 801
F.2d 1324, 1326 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik
GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir.
1984)). "[A]bsence from the reference of any claimed element negates
anticipation." Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571
(Fed. Cir. 1986). Here, we find that the Examiner has not shown that Farber
obtains a byte size of a field, as required by claim 1. Independent claim 7
includes a similar limitation.
Since we agree with at least one of the arguments advanced by
Appellant, we need not reach the merits of Appellant’s other arguments. It
follows that Appellant has shown that the Examiner erred in finding that
Farber renders claims 1-4 and 7 anticipated.

Claims 5, 6, 8, and 9
Issue 2: Did the Examiner err in finding that Farber discloses upon
determining that the respective status flag . . . is enabled, sending a
representation of the requested data to the client, as claimed?
The Examiner found that Farber discloses the respective flag for each
field in figure 12, step S238 and discloses sending a representation of the
data by sending compressed data. (see Ans. 5.)
Appellant contends that “nothing in this passage [of Farber] describes
the claimed step of ‘determining that the respective status flag for each field
Appeal 2009-010270
Application 11/463,623

5
containing the requested data is enabled.’” (App. Br. 16.) Appellant further
contends that Farber’s “operations of sending a message to update a cache
and the claimed ‘sending a representation of the requested data’ are distinct
from one another.” (Id.) We agree with Appellant.
Claim 5 requires, inter alia, upon determining that the respective
status flag for each field . . . is enabled, sending a representation of the
requested data to the client. (See claim 5.) Farber, on the other hand,
discloses “determin[ing] whether the file is locked by a cache server [and]
[i]f locked, . . . send a message to the cache server to update the cache of the
current processor using the Update Cache remote mechanism.” (see Farber,
col. 15, ll.14-20.)
Even if we assume arguendo (without deciding) that a locked file in
Farber enables a status flag (as proffered by the Examiner), we do not find,
and the Examiner has not established, that as a result of locking a file, a
representation of the requested data is sent to the client, as claimed. Instead,
as noted supra, Farber merely sends a message to the cache server to update
the cache, not a representation of the requested data to the client.
Furthermore, when Farber sends a compressed file to the client (see Farber
col. 16, ll. 23-25), this is not based on determining whether a status flag is
enabled or not.
Therefore, since we agree with at least one of the arguments advanced
by Appellant, we need not reach the merits of Appellant’s other arguments.
It follows that Appellant has shown that the Examiner erred in finding that
Farber renders claim 5 anticipated, and also claims 6, 8, and 9 which include
similar limitations.
Appeal 2009-010270
Application 11/463,623

6
Based on the record before us, we find that the Examiner erred in
rejecting claims 1-9. Accordingly, we reverse the rejections of claims 1-9.

DECISION
We reverse the Examiner’s § 102 rejection.

REVERSED
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