Ex Parte Schofield

Patent Trial and Appeal Board

Jul 25, 2016

13444463 (P.T.A.B. Jul. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/444,463
58139 7590
IBM CORP. (WSM)
c/o WINSTEAD P.C.
P.O. BOX 131851
DALLAS, TX 75313
04/11/2012
07/27/2016
FIRST NAMED INVENTOR
Andrew John Schofield
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.
GB920040074US2 1029
EXAMINER
SOMERS, MARC S
ART UNIT PAPER NUMBER
2159
NOTIFICATION DATE DELIVERY MODE
07/27/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patdocket@winstead.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW JOHN SCHOFIELD
Appeal2014-007543
Application 13/444,463
Technology Center 2100
Before MICHAEL J. STRAUSS, AMBER L. HAGY, and
MICHAEL M. BARRY, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-007543
Application 13/444,463
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
12-20 and 22-30. Claims 1-11 and 21 are canceled. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The claims are directed to reducing the number of operations
performed by a persistence manager against a persistent store of data items.
Abstract, Title. Claim 12, reproduced below, is illustrative of the claimed
subject matter:
12. An apparatus, comprising:
a memory unit for storing a computer program for
reducing the number of operations performed by a persistence
manager against a persistent store of data items t; and
a processor coupled to said memory unit, wherein the
processor, responsive to said computer program, comprises:
circuitry for receiving a plurality of requests from an
application;
circuitry for mapping each request into a transaction for
performance against the persistent store, each transaction
comprising at least one operation;
circuitry for accumulating a plurality of transactions; and
circuitry for preprocessing the plurality of transactions to
reduce the number of operations for performance against the
persistent store, wherein the preprocessing comprises:
maintaining a list of dispatch units, each dispatch
unit containing information about each transaction,
including state information; and
using the list of dispatch units to determine which
transaction state changes can be omitted.
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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Teng
Leymann et al.
Berkowitz et al.
Barsness et al.
us 4,642,758
us 6,012,094
US 6,529,921 Bl
US 2004/0039742 Al
REJECTIONS
The Examiner made the following rejections 1:
Feb. 10, 1987
Jan.4,2000
Mar. 4, 2003
Feb.26,2004
Claims 12-20 and 22-30 stand rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims 1-9 of
U.S. Patent No. 8,224,798. Final Act. 11-16.2
Claims 12-14, 16, 18-20, 22-24, 26, and 28-30 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Barsness and Berkowitz.
Final Act. 4--8.
Claims 15 and 25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Barsness, Berkowitz, and Teng. Final Act. 8-9.
Claims 17 and 27 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Barsness, Berkowitz, and Leymann. Final Act. 9-11.
1 The rejection of claims 22-30 under 35 U.S.C. § 101, has been withdrawn.
Advisory Action (filed Dec. 26, 2013).
2 Although Appellant's Amendment after Final (filed December 26, 2013)
included a terminal disclaimer ostensibly to obviate the double patenting
rejection, we find no indication the rejection has been withdrawn. In the
absence of argument traversing the rejection or its withdrawal, we
summarily affirm the double patenting rejection and invite the Examiner
reconsider the rejection in view of the terminal disclaimer as filed in
accordance with MPEP § 804.02.
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ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments 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 (Final Act. 3-28)
and (2) the reasons set forth by the Examiner in the Examiner's Answer in
response to Appellant's Appeal Brief (Ans. 2-28) and concur with the
conclusions reached by the Examiner. We highlight the following arguments
for emphasis.
Independent Claims 12 and 22
"mapping each request into a transaction"
Appellant contends, instead of teaching mapping a request into a
transaction, "Barsness teaches that the database-enabled messaging facility
parses the database request message to extract the database request." App.
Br. 5. Appellant traverses the Examiner's application of Barsness, arguing,
although "Barsness teaches embedding the database request into a formatted
message, such as text [and] ... parsing the database request message to
extract the database request, ... [ t ]here is no language in Barsness that
teaches mapping." App. Br. 7. Appellant further disputes the Examiner's
finding "that the embedded database request has to be mapped to database
operations/transactions or 'otherwise the submission of the database request
would do nothing since databases only respond to operations/transactions"'
(App. Br. 7 (citing Final Act. 18)), arguing "the database request that is
embedded into the formatted message does not necessarily have to be
mapped to database operations/transactions as alleged by the Examiner as
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the request itself could be a request for a database operation/transaction,
such as a SQL statement." App. Br. 7. Appellant further argues the
Examiner erred by finding "Appellant has defined 'mapping' as referring to
'converting."' Id. at 8 (citing Final Act. 18). Instead, "Appellant believes
that the term 'mapping' is clearly understood by one of ordinary skill in the
art." Id. Furthermore, Appellant argues, even under the Examiner's
interpretation, "Barsness does not teach mapping or mapping each request
into a transaction[, but] ... that the database request message may contain
parameters for constructing the database request rather than the entire
request." Id. Appellant further argues, rather than mapping or converting,
"Barsness teaches constructing the database request from the parameters."
Id.
The Examiner, however, finds Barsness's database requests are
embedded in a message that is received and parsed/decoded to extract the
request or converted into a database transaction request. Final Act. 4--5
(citing Barsness Fig. 5, i-fi-141, 43, 45). The Examiner explains Appellant's
argument is similar to that previously presented in connection with parent
Application 11/260,062 (Ex parte Schofield, Appeal 2009-008730 (BPAI
Nov. 23, 2011)), in which, referring to argument presented in that appeal, the
Board agreed "Appellant defined 'mapping' to refer to converting" and "that
the Barsness reference taught the 'mapping each request' limitation" (Ans. 3
(citing Appeal 2009-008730, Decision on Appeal 3, hereinafter the "Prior
Decision.")). In the present appeal, Appellant asserts he has not specifically
defined "mapping" as "converting." See App. Br. 8. We disagree; Appellant
3 Retrievable at https://e-foia.uspto.gov
/Foia/RetrievePdf?system=BPAI&flNm=fd2009008730-11-22-2011-1
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herein again effectively assents to the definition by virtue of addressing the
finding arguendo. The Examiner further finds Barsness's "database request
message cannot be sent to the database directly [but must] ... be mapped to
database operations/transactions [because] otherwise the submission of the
database request would do nothing since databases only respond to
operations/transactions." Ans. 4. The Examiner reasons "as the database
request message is a request and parsing maps one thing into another thing,
it is clear that mapping each request into a transaction against the persistence
store is taught [by Barsness]." Id. The Examiner further finds Barsness
discloses "the database request message may contain parameters and the
actual database requests/transactions/operations have to be
constructed/converted from the database request message" and "[t]he
construction of the database request from the extracted parameters would at
least have suggested mapping." Id. Appellant replies by arguing, inter alia,
"[t]here is no language in Barsness that teaches mapping" and, contrary to
the Examiner's finding, "the database request that is embedded into the
formatted message does not necessarily have to be mapped to database
operations/transactions as alleged by the Examiner as the request itself could
be a request for a database operation/transaction, such as a SQL statement."
Reply Br. 3.
Appellant's arguments are unpersuasive of Examiner error. When
construing claim terminology during prosecution before the Office, claims
are to be given their broadest reasonable interpretation consistent with the
Specification, reading claim language in light of the Specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Whether construed as
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converting or otherwise, Appellant provides insufficient evidence that one of
ordinary skill would interpret the claimed "mapping" more narrowly than
asserted by the Examiner in concluding that Barsness' s database requests
teach or suggest the disputed mapping limitation. Attorney arguments and
conclusory statements that are unsupported by factual evidence are entitled
to little probative value. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). For
example, Appellant provides insufficient evidence that the Specification as
filed explicitly or even implicitly requires mapping include some action or
step not taught or suggested by Barsness. Furthermore, we agree with the
Examiner's finding that Barsness's "database request message may contain
parameters and the actual database requests/transactions/operations have to
be constructed/ converted from the database request message [such that t ]he
construction of the database request from the extracted parameters would at
least have suggested mapping." Ans. 4. We further note, although not
binding, this finding is consistent with the Board's Prior Decision at page 6
("[T]he Examiner did not err in finding Barsness maps each of a plurality of
requests into a transaction for performance against a persistent store."). We
are similarly unpersuaded Barsness fails to teach or suggest mapping each
request into a transaction for performance against the persistent store. App.
Br. 9. Instead, we agree with the Examiner's finding that Barsness's SQL
operations that are used as database requests submitted to a database teach or
suggest transactions for performance against a persistent store. Ans. 5.
"maintaining a list of dispatch units"
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Appellant contends "that Barsness and Berkowitz, taken singly or in
combination, do not teach 'maintaining a list of dispatch units, each dispatch
unit containing information about each transaction, including state
information' as recited in claim 12 and similarly in claim 22." App. Br. 9.
Appellant argues "Berkowitz teaches that the synchronization thread obtains
a list of all transactions for the table that are active at a point," not the claim
requirement for maintaining a list of dispatch units, each dispatch unit
containing information about each transaction including state information.
App. Br. 10. According to Appellant, although "Berkowitz uses the term
'state,' the Examiner has not shown that Berkowitz teaches that each
dispatch unit contains information about each transaction, including state
information." App. Br. 10-11. Appellant further argues, if Berkowitz's
transaction object 802 of table 800 were mapped as corresponding to the
claimed dispatch unit, the rejection fails because there is no teaching that
transaction object 802 contains state information. App. Br. 11. In response,
the Examiner finds Berkowitz's uncommitted changes of the transaction are
equivalent to the claimed "state information," and "each transaction has a
dedicated data structure that stores the uncommitted changes (i.e. state
information)." Ans. 6. The Examiner further explains the combination of
Barsness and Berkowitz teaches or suggests maintaining a list of dispatch
units:
Barsness teaches in paragraph [0050] that a queue is used for
the various requests/transactions where Berkowitz modifies
Barsness to be utilized in an object-oriented
environment/system such that a queue of transaction objects
awaiting to be sent to the database is stored. Berkowitz further
teaches in column 13, lines 25-28 that various threads/processes
can keep a list of all the transactions.
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Ans. 6. In reply, Appellant argues "Berkowitz only teaches that each
transaction has an uncommitted change data structure that describes the
uncommitted changes that have been performed by that transaction" but that
"[t]here is no mapping being performed." Reply Br. 5.
Appellant's contention is unpersuasive of Examiner error. In
particular, absent persuasive evidence that "state information" requires more
than Berkowitz's uncommitted changes, we agree with the Examiner in
finding the reference teaches or suggests the disputed dispatch units
including state information. We also agree Berkowitz's uncommitted change
data storage and Barsness' queue each teach maintaining a list of dispatch
units including state information.
"using the list of dispatch units" and
"determin[ing] which transaction state changes can be omitted"
Appellant contends neither Barsness nor Berkowitz teaches using the
list of dispatch units to determine which transaction state changes can be
omitted as required by claims 12 and 22. App. Br. 12-13. Appellant argues
"Barsness teaches determining if the receive queue contains more than one
request for an insertion to the same table with a request for an insertion to a
different table in between," but fails to "teach determining which transaction
state changes can be omitted using the list of transaction objects 802." App.
Br. 13. The Examiner responds by finding
[Barsness's] queue of transaction objects (via the combination
with Berkowitz) is stored and the system analyzes the various
transaction[ s] to determine which uncommitted changes (i.e.
uncommitted insert operations/changes to the same table are
adjacent and a final insert operation/change overwrites one or
more intermediate insert operations/ changes) then the system
would delete the intermediate insert operation/changes. As
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applied to the prior art references, for any transaction object in
the queue, the respective uncommitted changes in the
transaction's uncommitted change data structure would modify
the transaction state such that one or more intermediate insert
operations (via the example in paragraph [0051] of Barsness)
would be removed from the uncommitted change data structure
where, as seen in Berkowitz, column 13, lines 48-49, the
transaction state comprises or is equated to all of the
uncommitted changes for the transaction.
Ans. 8-9.
Appellant's contention is unpersuasive of Examiner error. The
Examiner finds "for any transaction object in the queue, the respective
uncommitted changes in the transaction's uncommitted change data
structure would modify the transaction state." Ans. 8. Other than asserting
"[t]here is no language in the cited passages of Barsness and Berkowitz that
teaches determining which transaction state changes can be omitted," (App.
Br. 13), Appellant does not adequately explain why Barsness's overwriting
and thereby deletion of an intermediate insert operation/ change fails to teach
or suggest determining a state change to be omitted as required by claim 12.
Appellant does not persuasively explain why "these intermediate insertions
do not correspond to the 'uncommitted changes."' Reply Br. 7.
Furthermore, Appellant fails to provide sufficient evidence or persuasive
argument explaining why, under a broad but reasonable interpretation, the
limitation of "using [a] list of dispatch units" requires some affirmative
action or step that is not taught or suggested by the prior art of Barsness and
Berkowitz.
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Propriety of the combination of Barsness and Berkowitz
Appellant contends the combination of Barsness and Berkowitz is
improper because "[t]he Examiner has not provided any rational
underpinning as to how the Examiner derived his motivation for modifying
Barsness to include the [identified] missing claim limitation." App. Br. 25.
Appellant argues "[ w ]hile the Examiner may consider many factors in
finding a reason to combine, the Examiner still must explain how the
Examiner derived the motivation for modifying Barsness to include the
above-cited missing claim limitation." App. Br. 26 (citing MPEP § 2143).
The Examiner responds by explaining how the transactions of Barsness
would be replaced with the object-oriented versions (i.e., transaction objects)
of Berkowitz. Ans. 20-21. The Examiner supports the combination by
finding the "advantage of only parsing through mini-logs of the particular
transactions would be advantageous for Barsness since Barsness appears to
be receiving large volume of requests via their wide area network
communication system/server where processing delays can occur when
parsing through the extensively large volume of log entries." Id. at 21.
Appellant's contention is unpersuasive of Examiner error. Appellant's
challenge to the Examiner's reasoning is the naked allegation, not that the
reasoning is improper, but that the Examiner has failed to "explain how the
Examiner derived the motivation for modifying Barsness to include the
[teachings of Berkowitz]." App. Br. 26. We disagree. Appellant has not
provided persuasive evidence or line of reasoning explaining why the
Examiner's rationale is erroneous or why a person of ordinary skill in the art
would not have reached the conclusions reached by the Examiner. See
DyStar Textilfarben GmbH & Co. Deutsch/and KG v. CH Patrick Co., 464
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F.3d 1356, 1368 (Fed. Cir. 2006) ("[T]he proper question is whether the
ordinary artisan possesses knowledge and skills rendering him capable of
combining the prior art references."). In the absence of evidence or
persuasive argument that the Examiner's rationale is erroneous, we find the
Examiner has articulated reasoning with rational underpinnings sufficient to
justify the legal conclusion of obviousness. See KSR Int 'l Co. v. Teleflex,
Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006)). In contrast, Appellant fails to provide persuasive evidence or
explanation showing that the Examiner's asserted combination is anything
other than the combination of familiar elements yielding no more than
predictable results. See KSR, 550 U.S. at 416-17. Such a combination is
itself a sufficient reasoning with rational underpinning to support a finding
of obviousness. Id.
For the reasons discussed supra, Appellant's contentions in
connection with the rejection of independent claims 12 and 22 are
unpersuasive of Examiner error. Accordingly, we sustain the rejection of
independent claims 12 and 22 under 35 U.S.C. § 103(a) as being
unpatentable over Barsness and Berkowitz.
Dependent Claims 13-20 and 23-30
We have reviewed Appellant's contentions of error in connection with
the rejections of dependent claims 13-20 and 23-30 and find each
unpersuasive of error for the reasons articulated by the Examiner. See Final
Act. 6-11; Ans. 9-28. In particular, Appellant's contentions of error largely
consist of repetition of (i) arguments presented in connection with the
independent claims (e.g., claims 13 and 23), (ii) the argument "[t]here is no
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language in the cited passage [of the reference] that teaches" the disputed
claim limitation(s );" and/or (iii) the argument the combination of references
applied in rejecting the respective claims is improper for failure of the
Examiner to provide articulated reasoning with a rational underpinning to
support the legal conclusion of obviousness.
In connection with the repetition of arguments previously presented,
such as in the case of claims 13 and 23, such argument is not considered a
separate argument for patentability and is not persuasive for the reasons
discussed supra.
Argument that the prior art fails to include particular language is not
persuasive to the extent the Examiner finds the reference teaches or suggests
the disputed limitation. That is, a reference does not have to satisfy an
ipsissimis verbis test to disclose a claimed element. In re Gleave, 560 F.3d
1331, 1334 (Fed. Cir. 2009). See also Kennametal, Inc. v. Ingersoll Cutting
Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) ("[A] reference can
anticipate a claim even if it 'd[ oes] not expressly spell out' all the limitations
arranged or combined as in the claim, if a person of skill in the art, reading
the reference, would 'at once envisage' the claimed arrangement or
combination.") (quoting In re Petering, 301F.2d676, 681 (CCPA 1962)).
To the extent Appellant contends the Examiner's analysis and/or
interpretation of the references and their teachings/ suggestions is/ are
erroneous, on review we find Appellant's argument unpersuasive and, based
on a preponderance of the evidence, agree with and adopt the findings and
conclusions of the Examiner.
Finally, we are unpersuaded by Appellant's arguments that the
combination of Barsness, Berkowitz, and Teng in rejecting claims 15 and 25
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(App. Br. 31-34) and the combination of Barsness, Berkowitz, and Leymann
in rejecting claims 17 and 27 (id. at 37--41) are improper. Instead, we find
the Examiner has articulated reasoning with rational underpinnings
sufficient to justify the legal conclusion of obviousness. See Final Act. 9,
1 O; Ans. 24--25, 26-28.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the rejections of claims 12-14, 16, 18-20,
22-24, 26, and 28-30 under 35 U.S.C. § 103(a) over Barsness and
Berkowitz, claims 15 and 25 over Barsness, Berkowitz, and Teng, and
claims 17 and 27 over Barsness, Berkowitz, and Leymann. Furthermore, in
the absence of argument traversing the rejection or its withdrawal, we
summarily affirm the rejection of claims 12-20 and 22-30 on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1-9 of U.S. Patent No. 8,224,798.
DECISION
The Examiner's decision to reject claims 12-20 and 22-30 is
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)(l )(iv).
AFFIRMED
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