Ex Parte Sirek

Board of Patent Appeals and Interferences

Jun 24, 2009

10954579 (B.P.A.I. Jun. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARK W. SIREK
____________

Appeal 2009-002083
Application 10/954,5791
Technology Center 2100
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Decided: 2 June 25, 2009
____________

Before JAMES D. THOMAS, LEE E. BARRETT, and
CAROLYN D. THOMAS, Administrative Patent Judges.

C. THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed September 30, 2004. The real party in interest is
Teradata USA, Inc..
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection
of claims 1, 4-6, 9-13, 15-19, and 21 mailed May 11, 2007, which are all the
claims remaining in the application, as claims 2, 3, 7, 8, 14, and 20 are
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

A. INVENTION
Appellant invented a system, method, and computer readable medium
for receiving a query that specifies an inequality join involving at least a first
relation and a second relation. A plurality of segments of the first relation is
sorted in the cache. Each sorted segment of the first relation in the cache is
compared with the second relation. (Spec. 21, Abstract.)

B. ILLUSTRATIVE CLAIMS
The appeal contains claims 1, 4-6, 9-13, 15-19, and 21. Claims 1, 4,
12, and 18 are independent claims. Claims 1 and 4 are illustrative:
1. A method executed by at least one processor in a
database system having a persistent storage and a cache, comprising:
receiving a query to perform an inequality join involving
at least a join column of a first relation and a join column of a second
relation;
sequentially sorting segments of the first relation in the
cache;
representing each of the sorted first relation segments as
a corresponding balanced binary search tree in which duplicate values
of the join column of the first relation are eliminated;
receiving a first sorted segment of the first relation in the
cache;
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comparing the first sorted segment of the first relation in
the cache with the second relation using the corresponding balanced
binary search tree; and
outputting a result of the query to a client station.

4. A method executed by a least one processor in a database
system, the database system having a persistent storage and a cache,
the method comprising:
receiving a query that specifies an inequality join
involving at least a first relation and a second relation;
sorting a plurality of segments of the first relation in the
cache;
after sorting all of the segments of the first relation in the
cache, sequentially retrieving the sorted segments of the first relation
into the cache and comparing each of the retrieved sorted segments of
the relation in the cache with the second relation; and
outputting results of the query to a client station.

C. REFERENCES
The references relied upon by the Examiner as evidence in rejecting
the claims on appeal are as follows:
Boulle US 2004/0158548 A1 Aug. 12, 2004
(Filed May 21, 2002)

David J. DeWitt et al., An Evaluation of Non-Equijion Algorithms,
Proceedings of the 17th international Conference on Very Large Data Bases
(VLDB) 443-452 (September 1991) (DeWitt).

D. REJECTIONS
The Examiner entered the following rejections which are before us for
review:
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(1) Claims 1, 6, 12, 13, 15-19, and 21 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over DeWitt in view of Boulle; and
(2) Claims 4, 5, and 9-11 are rejected under 35 U.S.C. § 102(b) as
being anticipated by DeWitt.

II. PROSECUTION HISTORY
Appellant appealed from the Final Rejection and filed an Appeal Brief
(App. Br.) on November 13, 2007. The Examiner mailed an Examiner’s
Answer (Ans.) on February 1, 2008. Appellant filed a Reply Brief (Reply
Br.) on April 1, 2008.

III. FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.
DeWitt
1. DeWitt discloses that “[t]he most straightforward way to partition
R would be to sort R on R.A, then scan R to find the partitioning elements.
This would incur the cost of a full sort of R during the partitioning phase,
something that we wish to avoid.” (444: section 2.2, 1st para.)
2. DeWitt discloses that “[a] better way is to randomly sample R to
determine partitioning elements that with high probability are close to
elements that would be found if we sorted R. (444-445: section 2.2, 1st
para.)
3. DeWitt discloses that “the partitioned band join algorithms do a
binary search” (452: section 8, 1st para.).

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Boulle
4. Boulle discloses that “[t]he list of values )П2[illeg.] is advantageously
organized in the form of a balanced binary search tree whereby the
insertions/eliminations can be generated while maintaining the ordered
relationship in the list.” (¶ [0073].)

IV. PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis
Pharmaceutical Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citing Minn.
Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d
1559, 1565 (Fed. Cir. 1992)). “Anticipation of a patent claim requires a
finding that the claim at issue ‘reads on’ a prior art reference.” Atlas Powder
Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed Cir. 1999) (“In other words, if
granting patent protection on the disputed claim would allow the patentee to
exclude the public from practicing the prior art, then that claim is
anticipated, regardless of whether it also covers subject matter not in the
prior art.”) (internal citations omitted).
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
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(Fed. Cir. 1998)). Therefore, we look to Appellants’ Brief to show error in
the proffered prima facie case.

V. ANALYSIS
Grouping of Claims
In the Brief:
Appellant argues claims 1, 12, 13, and 15-18 as a group (App. Br. 5-
8). For claims 6, 12, 13, and 15-18, Appellant repeats the same argument
made for claim 1. We will, therefore, treat claims 6, 12, 13, and 15-18 as
standing or falling with claim 1.
Appellant argues claims 4-6 and 9-11 as a group (App. Br. 9-11). For
claims 5, 6, 9-11, 19, and 21, Appellant repeats the same argument made for
claim 4. We will, therefore, treat claims 5, 6, and 9-11 as standing or falling
with claim 4.
Appellant argues claims 19 and 21 separately (App. Br. 8).
37 C.F.R. § 41.37(c)(1)(vii). See also In re Young, 927 F.2d 588, 590
(Fed. Cir. 1991).

The Anticipation Rejection
We first consider the Examiner’s rejection of the claims under 35
U.S.C. § 102(b) as being anticipated by DeWitt.

Claims 4, 5, and 9-11
Appellant contends that “DeWitt contemplates sorting one partition
Ri, and then joining this sorted partition Ri with tuples of Si. This is then
repeated for the next partition Ri. There is thus no teaching in DeWitt of
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first sorting all segments of the first relation (R) in the cache, and then
performing the comparing recited in claim 4.” (App. Br. 10: see also Reply
Br. 2.)
The Examiner found DeWitt teaches performing the comparing after
sorting all the segments of the first relation in the cache and cites various
sections of DeWitt (Ans. 17).
Issue: Has Appellant shown that the Examiner erred in finding that
DeWitt discloses “after sorting all of the segments of the first relation in the
cache, . . . comparing each of the retrieved sorted segments of the first
relation in the cache with the second relation”?
The Examiner has cited various portions of DeWitt in an attempt to
illustrate the above-noted claim 4 limitations (see Ans. 17). For example,
the Examiner has shown that DeWitt discloses partitioning and sorting non-
equijoin relations and also discloses that a full sort during the partitioning
phase is something that they wish to avoid (FF 1). Although DeWitt appears
to have found a better alternative to a “full sort,” DeWitt has nonetheless
shown that a “full sort” during the partitioning phase (a phase preceding the
comparing stage) is known in the art. It does not matter that DeWitt prefers
to perform a random sample to determine partitioning elements (FF 2), as
oppose to a full sort. Thus, we find that DeWitt teaches “after sorting all of
the segments . . . comparing,” as set forth in claim 4.
Therefore, Appellant has not persuaded us of error in the Examiner’s
conclusion of anticipation for representative claim 4. Therefore, we affirm
the Examiner’s § 102 rejection of independent claim 4 and of claims 5, and
9-11, which fall therewith.

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The Obviousness Rejection
We now consider the Examiner’s rejection of the claims under
35 U.S.C. § 103(a).
Claim 6
For claim 6, Appellant fails to present any separate arguments.
Therefore, we also affirm the Examiner’s § 103 rejection of dependent
claims 6 for the same reason presented supra for claim 4.

Claims 1, 12, 13, 15-19, and 21
Appellant contends that “[a]lthough Boulle makes reference to a
‘balanced binary search tree,’ the context of this reference is completely
different from the subject matter recited in claim 1.” (App. Br. 6; see also
Reply Br. 1-2.)
Appellant further contends:
Thus, the fact that a list of the π2 values is organized in the form of a
balanced binary search tree provides no hint or teaching of
representing each of sorted first relation segments as a corresponding
balanced binary search tree in which duplicate value of the join
column of the first relation are eliminated. The list of π2 values
disclosed in Boulle makes not reference to the join column of a first
relation, and in fact, is not a representation of sorted first relation
segments.

(App. Br. 6.)
The Examiner found that “DeWitt does not explicitly disclose using
the corresponding balance binary search tree data structure in representing
each of the sorted first relation. Boulle, on the other hand, teaches using a
balanced binary search data structure because binary search trees are much
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more useful if they are balanced as known in the art.” (Ans. 16, citation
omitted.)
Issue: Has Appellant shown that the Examiner erred in finding that
the combination of DeWitt and Boulle discloses “representing each of the
sorted first relation segments as a corresponding balanced binary search tree
in which duplicate values of the join column of the first relation are
eliminated”?
Here, the Examiner cites various portions of DeWitt without
providing any reasoning/analysis as to why such portions equate to the
disputed claim limitations. While DeWitt does indeed make reference to a
“binary search” (FF 3), we agree with Appellant that the context in which
DeWitt is performing a binary search is distinguishable from the claimed
“balanced binary search tree” which represents each of the sorted first
relation segments. One could conclude that that the Examiner is merely
picking and choosing various features in DeWitt based on a word search and
then declaring that it would have been obvious based on such found words.
However, an articulated reason and a correlation between such findings and
the claimed invention is also needed. On the other hand, while Boulle
discloses “a balanced binary search tree” as it relates to an algorithm for a
discretization method (FF 4), again the Examiner has not established how
Boulle’s “balanced binary search tree” represents “each of the sorted first
relation segments,” as set forth in claim 1. Instead, Boulle’s balanced binary
search tree seeks to represent the discretization of database attributes
(Boulle, Abstract). Although the Examiner has found common elements (a
balanced binary search tree) between the claimed invention and the cited
references, a conclusion of obviousness based on the commonality of certain
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elements is not, in itself, a proper basis on which to conclude obviousness of
the claimed subject matter within the meaning of 35 U.S.C. § 103. The
Examiner must set forth some articulated reason why the skilled artisan
would have combined the references in the manner sought by the Examiner
in order to arrive at the instant claimed subject matter. Here, the Examiner
does not provide a convincing rationale.
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 the
combination of DeWitt and Boulle renders claims 1, 12, 13, 15-19, and 21
unpatentable.
Thus, Appellant has persuaded us of error in the Examiner’s
conclusion of obviousness for representative claim 1. Therefore, we reverse
the Examiner’s § 103 rejection of independent claim 1 and of claims 12, 13,
15-19, and 21, which stand therewith.

VI. CONCLUSIONS
We conclude;
(1) Appellant has not shown that the Examiner erred in rejecting
claims 4-6 and 9-11 under 35 U.S.C. § 102(b); and
(2) Appellant has shown that the Examiner erred in rejecting claims
1, 12, 13, 15-19, and 21 under 35 U.S.C. § 103(a).

VII. DECISION
In view of the foregoing discussion, we affirm-in-part the Examiner’s
rejection of claims 1, 4-6, 9-13, 15-19, and 21.
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AFFIRMED-IN-PART

msc

JAMES M. STOVER
TERADATA CORPORATION
2835 MIAMI VILLAGE DRIVE
MIAMISBURG, OH 45342