Ex Parte Vanyo et al

Board of Patent Appeals and Interferences

Jan 24, 2012

10849473 (B.P.A.I. Jan. 24, 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.
10/849,473 05/19/2004 Tadd E. Vanyo RA 5567 (33012/374/101) 6660
27516 7590 01/24/2012
UNISYS CORPORATION
Office of the General Counsel
801 Lakeview Drive, Suite 100
MailStop: 2NW
Blue Bell, PA 19422
EXAMINER
VY, HUNG T
ART UNIT PAPER NUMBER
2163
MAIL DATE DELIVERY MODE
01/24/2012 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 TADD E. VANYO, CRAIG D. HANSON, NEIL A. LAMBERT,
and MICHAEL F. PARENTEAU
____________

Appeal 2010-003774
Application 10/849,473
Technology Center 2100
____________

Before JOSEPH L. DIXON, HOWARD B. BLANKENSHIP, and
DEBRA K. STEPHENS, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-5 and 11-21, which are all the claims remaining in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm, and enter a new ground of rejection as permitted by 37
C.F.R. § 41.50(b).
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Application 10/849,473

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Representative Claims
1. An apparatus comprising:
a. a user terminal which generates a first service request;
b. a publicly accessible digital data communication network
responsively coupled to said user terminal;
c. a data base management system responsively coupled to said
user terminal via said publicly accessible digital data
communication network which receives said first service
request;
d. a data base incompatible with, but responsively coupled to, said
data base management system; and
e. a facility located within said data base management system
which permits said data base management system to access said
data base in response to said receipt of said first service request.

16. In a data processing system the improvement comprising:
a. a user terminal which generates a first service request
responsively coupled via a publicly accessible digital data
communication network to a data base management system;
b. a data base incompatible with said data base management
system and responsively coupled thereto; and
c. a facility responsively coupled between said data base
management system and said data base for converting said first
service request to a form compatible with said data base.

Examiner’s Rejections
Claims 1-5 and 11-21 stand provisionally rejected under the judicially
created doctrine of obviousness-type double patenting as being unpatentable
over claims 1-5 and 11-21 in co-pending application 10/849,470.1

1 The Examiner’s rejections over claims in applications 10/848,901,
10/848,899, and 10/848,758 are dismissed as moot, as the application is now
abandoned.
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Claims 1, 11, 16, and 21 stand rejected on the ground of non-statutory
obviousness-type double patenting as being unpatentable over claim 6 of US
Patent 7,013,341.
Claims 1, 11, 16, and 21 stand rejected on the ground of non-statutory
obviousness-type double patenting as being unpatentable over claims 1, 6,
and 16 of US Patent 6,832,237.
Claims 1-5, 11-13, and 16-21 stand rejected under 35 U.S.C. § 102(e)
as being anticipated by Wei (US 6,654,784 B1).
Claims 14 and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wei and Admitted Prior Art (Spec. 4, final ¶) (“AAPA”).

ANALYSIS
Obviousness-Type Double Patenting Rejections
Appellants’ only mention in the Appeal Brief of the double patenting
rejections appears at pages 5 through 6. “There remains a provisional
obviousness-type double patenting rejection, which is not yet ripe.
Applicants will deal with this issue by way of terminal disclaimer or other
appropriate measure after the matter becomes ripe.” Br. 5-6.
However, provisional rejections for obviousness-type double
patenting are reviewable on appeal. In view of the lack of response from
Appellants, we summarily sustain the Examiner’s provisional rejection for
obviousness-type double patenting. Our affirmance of the double patenting
rejection is only provisional, and “might be obviated by future events.” See
In re Wetterau, 356 F.2d 556, 558 (CCPA 1966).
Further, Appellants also did not respond to the double patenting
rejections that were not provisional -- namely, the rejections over US Patents
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6,832,237 and 7,013,341. We therefore also summarily sustain the
obviousness-type double patenting rejections over the issued patents.

Rejections Over Prior Art
We reverse, pro forma, the § 102(e) rejection of claims 1 through 5
because the claims are indefinite under 35 U.S.C. § 112, second paragraph.
Rejections of claims over prior art should not be based on speculation and
assumptions as to the scope of the claims. See In re Steele, 305 F.2d 859,
862 (CCPA 1962). We enter a new ground of rejection against claims 1
through 5, infra.
Instant claim 16 recites a “user terminal” which generates a first
service request “responsively coupled” via a “publicly accessible digital data
communication network” to a data base management system. Wei describes
a client machine 20 (Fig. 1) connected via “Web 19” to Web Server 18.
Appellants would have us believe, apparently, that the “Web” or the Internet
is not a “publicly accessible digital data communication network.” Cf. Br.
21; Wei col. 4, ll. 55-58, col. 4, l. 64 - col. 5, l. 1, col. 6, ll. 21-26; instant
claim 8. In short, we disagree that the Internet is not a publicly accessible
digital data communication network.
Claim 16 further recites a data base “incompatible with” the data base
management system and responsively coupled thereto, and a “facility
responsively coupled between” the data base management system and the
data base “for converting said first service request to a form compatible with
said data base.”
The Examiner posits that a “data base management system” may
consist of Web Server 18 and Application Server 16 (Wei Fig. 1) based on a
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technical dictionary definition of a “database management system” as
(merely) the software interface between the user and the database. Ans. 14.
Appellants have not responded to the Examiner’s evidence in support of the
position. Appellants did not file a reply brief in response to the Answer.
In any event, we need not determine whether the “data base
management system” of claim 16 includes within its scope software or
systems beyond those most commonly regarded as data base management
systems -- e.g., the MAPPER data base management system, the ORACLE
data base management system, or the RDMS data base management system.
Spec. 1:15-20; Fig. 4 elements 188, 200, 194, 206. We need not make the
determination because even if the Examiner’s interpretation of the relevant
term is reasonable, the § 102(e) rejection of the claim over Wei fails in the
mapping of corresponding elements.
In particular, the rejection of claim 16 submits that Web Server 18 and
Application Server 16 (Wei Fig. 1), and perhaps backend server 14,
correspond to the claimed “data base management system.” Ans. 7. The
rejection also submits that Wei describes a “legacy” data base (10, 12, 14) --
which is not claimed but apparently refers to the “data base” of claim 16.
The “legacy” data base is deemed to be “incompatible” with some
unidentified entity, but “responsively coupled” to data base management
system 16, 18. Id.
However, the rejection continues that a “facility (18)” is responsively
coupled to, or “between” (claim 16), said “legacy” (not claimed) data base
management system 16 and said “legacy” (not claimed) data base.
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
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art reference.” Verdegaal Bros. Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987) (citations omitted).
[U]nless a reference discloses within the four corners of the
document not only all of the limitations claimed but also all of
the limitations arranged or combined in the same way as recited
in the claim, it cannot be said to prove prior invention of the
thing claimed and, thus, cannot anticipate under 35 U.S.C.
§ 102.
. . . .

Thus, it is not enough that the prior art reference discloses part
of the claimed invention, which an ordinary artisan might
supplement to make the whole, or that it includes multiple,
distinct teachings that the artisan might somehow combine to
achieve the claimed invention.

Net MoneyIn, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008)
(citation omitted).
We thus agree with Appellants to the extent that the Examiner has
failed to show anticipation of the subject matter of claim 16. In particular,
the “facility” that is “responsively coupled between said data base
management system and said data base for converting said first service
request to a form compatible with said data base” as claimed cannot be met
by Web Server 18 (Wei Fig. 1) because the rejection contends that Web
Server 18 also forms part of the data base management system. Moreover, it
is not seen how the data base management system “16, 18” of Wei may be
“incompatible with” the data base (backend servers) “10, 12, 14,” when the
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Application Server 16 communicates directly with backend servers 10, 12,
14. See Wei Figs. 1, 3; col. 7, ll. 18-25.2
We therefore cannot sustain the § 102(e) rejection of claim 16, nor
that of dependent claims 17 through 20. We also cannot sustain the § 102(e)
rejection of independent claim 21, which recites limitations similar to those
of claim 16.
Independent claim 11 recites, in the format permitted by 35 U.S.C.
§ 112, sixth paragraph, “converting means responsively coupled between
said offering means and said maintaining means for converting said service
request to a language cognizable by said maintaining means.” The
corresponding structure for the “converting means” is one or more of the
Driver API’s 188, 190, 192, 194, 196, and 198 (Fig. 4). See Br. 12, element
“d.” We cannot sustain the § 102(e) rejection of claim 11, nor that of
dependent claims 12 and 13, at least for the reason that the rejection (Ans.
11) fails to specify the structure in Wei that is deemed to be the same as or

2 Perhaps Web Server 18 (Wei Fig. 1) could be taken as the “data base
management system” and Application Server 16 the “facility responsively
coupled between” the data base management system and the data base 10,
12, 14 for converting the service request to a form compatible with the data
base. However, such a reading of the claim on the reference would
constitute a new ground of rejection, which we decline to enter. Whether the
ordinary artisan would consider a Web server to be a “data base
management system” has not been sufficiently developed on this record.
For example, the Examiner did not provide a copy of the relevant entry in
the technical dictionary (Ans. 14) and address the proffered portion of the
definition in context. In addition to being a “software interface between the
database and the user,” “[a] database management system handles user
requests for database actions and allows for control of security and data
integrity requirements.” Microsoft Computer Dictionary, Fifth Edition
(2002).
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equivalent to the claimed “converting means.” We further cannot sustain
the § 103(a) rejection of claims 14 and 15 over the combination of Wei and
AAPA. Claims 14 and 15 depend from claim 11 and the addition of AAPA
does not remedy the basic deficiency in the rejection with respect to the
limitations incorporated from the base claim.

New Ground of Rejection -- 37 C.F.R. § 41.50(b)
We reject claims 1-5 under 35 U.S.C. § 112, second paragraph, as
being indefinite.
We agree with the Examiner (Ans. 13-14) that base claim 1 is
“confusing, vague and indefinite.” However, the Examiner did not reject the
claims for indefiniteness.
Claim 1 recites “a data base incompatible with, but responsively
coupled to, said database management system.” The claim further recites a
facility located within the data base management system which permits the
data base management system “to access said data base in response to said
receipt of said first service request.” The claim is thus internally
inconsistent, and therefore indefinite. A data base cannot be “incompatible”
with but “responsively coupled to” a data base management system that
includes a “facility” that permits that data base management system to
access the data base in response to receipt of a service request.

DECISION
The provisional rejection of claims 1-5 and 11-21 under the judicially
created doctrine of obviousness-type double patenting is affirmed. The
rejections of claims 1, 11, 16, and 21 on the ground of non-statutory
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obviousness-type double patenting are affirmed. The rejections under
§§ 102(e) and 103(a) are reversed.
In a new ground of rejection, we have rejected claims 1-5 under
35 U.S.C. § 112, second paragraph.
With respect to the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1)
provides that “Appellant may file a single request for rehearing within two
months from the date of the original decision of the Board.”
In addition to affirming the Examiner’s rejection(s) of one or more
claims, this decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:

(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
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the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).

AFFIRMED -- 37 C.F.R. § 41.50(b)

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