Ex Parte Vierich et al

Board of Patent Appeals and Interferences

Jul 30, 2012

10624490 (B.P.A.I. Jul. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte RALF VIERICH and KEVIN FERGUSON
____________________

Appeal 2010-004089
Application 10/624,490
Technology Center 2100
____________________

Before KALYAN K. DESHPANDE, MICHAEL R. ZECHER,
and BRYAN F. MOORE, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-004089
Application 10/624490

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Appellants appeal under 35 U.S.C. § 134(a) (2002) from a final
rejection of claims 32-48. Claims 1-31 have been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Introduction
According to Appellants, the invention relates to a database interface
for generating drill-through paths for various data cubes derived from
different report generating applications. (Abstract).

STATEMENT OF THE CASE

Exemplary Claim
Claim 32 is an exemplary claim and is reproduced below:
32. A method for navigating from a source report to a target
report in a business intelligence application, the method
comprising the steps of:
providing a parameter for an item, the parameter defining
an input or an output to a drill-through source or a drill-through
target;
establishing a parameter mapping between the parameter
and the item, the parameter mapping mapping context elements
from the drill-through source to the item;
defining a drill-through path from the drill-through
source to the drill-through target, the drill-through path
including the parameter mapping; and
applying the context of the drill-through source to the
drill-through target.

Appeal 2010-004089
Application 10/624490

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Prior Art
Thomson US 2004/0034615 A1 Feb. 19, 2004
(filed Dec. 16, 2002)

Rejections
Claims 41-44 stand rejected under 35 U.S.C. §101 as being directed to
non-statutory subject matter. (Ans. 3). Claims 32-48 stand rejected under
35 U.S.C. §102(a) as being anticipated by Thomson. (Ans. 4-6).

ISSUES
1. Are claims 41-44 directed to non-statutory subject matter under 35
U.S.C. § 101? In particular, the issue turns on whether the claimed
“system” can be construed as software per se.
2. Has the Examiner erred in finding that Thomson anticipates each
claim limitation recited in independent claim 32?

ANALYSIS
Claims 41-44 rejected under 35 U.S.C. §101
The Examiner rejected claim 41-44 as software per se. (Ans. 3).
Appellants do not address this rejection; instead, Appellants argue that claim
41 is directed to a “practical application” under the machine-transformation
test. (Br. 9-10). We note that Appellant’s argument is directed to a
“method” claim, and does not specifically address the Examiner’s position
that claim 41 is a “system” claim that must be tied to hardware, which
enables the functional descriptive material to be realized. Ans. 3 and 9.
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Application 10/624490

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Absent any contrary evidence or persuasive argument, we sustain the
Examiner’s rejection of claims 41-44 under 35 U.S.C. § 101.

Claims 32-48 rejected under 35 U.S.C. §102(a)
Appellants argue “[Thomson] does not teach or suggest a parameter
for an item, which defines an input or an output to a drill-through source or a
drill-through target,” as per claim 32. (Br. 5-6 (emphasis omitted)). We
begin our analysis by first looking to Appellants’ Specification and the
recited claims to construe the claim terms “item” and “parameter.”
Appellants’ Specification does not explicitly define the term “item.”
The Examiner finds that an “item” encompasses a target report (or reports),
as described by Thomson. (Ans. 7). We note that nothing in the
specification precludes an item from being a target report, nor do the claims
limit the scope of an “item.” Claim 35 narrows the scope of an “item” and
explicitly recites that an item can be a “drill through target.” To the extent
that Appellants are arguing that an item cannot be defined as including the
target report, Appellants have provided no persuasive evidence that the term
“item” should be so limited.
Further, Appellants’ Specification recites that a parameter “defines an
input or output to a drill through source or target.” (Spec. page 6, lines 10-
11). The Examiner finds that cell values or members in the source report
selected by a user input meet the limitation to a “parameter.” (Ans. 7-8) We
agree with the Examiner’s finding that parameter encompasses cell values or
members, as those in the originating report described by Thomson. (Ans. 7-
8; Thomson at ¶ 62). In particular, we find that the selected cell value or
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member in Thomas’ original report amounts to an input to a drill-through
source, as claimed.
Appellants argue “Thomson does not teach or suggest a parameter
mapping between the parameter and the item, the parameter for the item.”
(Br. 6 (emphasis omitted)). We agree with the Examiner’s finding that
Thomson teaches parameter mapping. (Ans. 8). That is, we find that
Thomson’s disclosure of a translation service which maps from the selected
cell member to the target report describes the parameter mapping, as
claimed. (Id.; Thomson at ¶ 64).
Appellants also argue Thomson does not teach or suggest “defining a
drill-through path from the drill-through source to the drill-through target,
the drill-through path including the parameter mapping,” as recited in claim
32. (Br. 7). We agree with the Examiner’s finding that Thomson teaches
defining a drill-through path from the drill-through source to the drill-
through target because Thomson at paragraph [0057], lines 8-12, discusses
the translation service using a translation map. (Ans. 8; Thomson at ¶ 57).
In other words, we agree with the Examiner that Thomson’s disclosure of
using a translation map to translate extracted context from a source (drill-
through source) to context for the target (drill-through target) describes a
path from the source to the target with parameter mapping, as claimed.
Appellants argue Thomson does not teach or suggest “applying the
context of the drill-through source to the drill-through target,” as recited in
claim 32. (Br. 7-8). We agree with the Examiner’s finding that Thomson
teaches applying the context when “[t]ranslation service 106 translates from
the extracted context into the context for the target data source.” (Ans. 9;
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Thomson at ¶ 57). In other words, we agree with the Examiner that
Thomson’s disclosure of translating the context for a target amounts to
application of the context to the target data source.
Appellants also argue that “[Thomson] at paragraph [0039] teaches
away from Applicants’ invention.” (Br. 8). However, Appellants’ argument
is misplaced because “[t]eaching away is irrelevant to anticipation.”
Seachange International, Inc., v. C-Cor, Inc., 413 F.3d 1361, 1380 (Fed. Cir.
2005); see also Twin Disc, Inc. v. United States, 231 USPQ 417, 424 (Cl. Ct.
1986) (quoting In re Self, 671 F.2d 1344 (CCPA 1982)). Therefore, we are
not persuaded by that argument.
Therefore, the Examiner did not err in rejecting claim 32 as
anticipated by Thomson under 35 U.S.C. § 102(e). Claims 33-48 were not
separately argued with particularity.

DECISION
The Examiner’s rejection of claims 41-44 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter is affirmed. The Examiner’s
rejection of claims 32-48 under 35 U.S.C. § 102(e) as being anticipated by
Thomson 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)(1)(iv) (2010).

AFFIRMED

msc