Ex Parte Wieser et alDownload PDFPatent Trial and Appeal BoardSep 19, 201311393739 (P.T.A.B. Sep. 19, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/393,739 03/31/2006 Oswald Wieser 09432.0053 8276 60668 7590 09/19/2013 SAP / FINNEGAN, HENDERSON LLP 901 NEW YORK AVENUE, NW WASHINGTON, DC 20001-4413 EXAMINER ALAM, SHAHID AL ART UNIT PAPER NUMBER 2162 MAIL DATE DELIVERY MODE 09/19/2013 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte OSWALD WIESER, CHRISTOPH KERNKE, and MARTIN GUENTHER ____________ Appeal 2011-004355 Application 11/393,739 Technology Center 2100 ____________ Before STEPHEN C. SIU, KRISTEN L. DROESCH, and GREGG I. ANDERSON, Administrative Patent Judges. ANDERSON, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-15. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE Appellants’ disclosed invention relates to a method and system for identifying a master pattern in a target database, which may be used as a template for data entry in the target database. One or more pattern Appeal 2011-004355 Application 11/393,739 2 significance guidelines may be configured. The pattern significance guidelines may specify the minimum number of attributes that must be associated with the pattern in the target database. See generally Spec. ¶¶ [006]-[013]. Claim 1 is illustrative: 1. A method for identifying a master pattern in a target database, the method comprising: identifying the target database based on at least one database prerequisite; configuring at least one pattern significance guideline; generating a plurality of similarity patterns based on comparisons of records in the target database, wherein the comparison includes serially designating each record in the target database as a test record and comparing the test record to all other records in the target database to generate the plurality of similarity patterns such that every single existing record in the target database serves as a test record at least once and the test record is compared to all of the other records in the target database; and consolidating the plurality of similarity patterns based on the at least one pattern significance guideline to generate at least one unique master pattern. THE REJECTION AT ISSUE The Examiner rejected claims 1, 5, 6, 10, 11, and 15 under 35 U.S.C. § 103(a) as being unpatentable over Kenyon (US 2007/0129952 A1, published Jun. 7, 2007 (priority Sep. 21, 1999 under 35 U.S.C. § 120)), Day (US 2008/0059438 A1, published Mar. 6, 2008 (priority Oct. 25, 2001 under 35 U.S.C. § 120)), and Henderson (US 2005/0102323 A1, published May 12, 2005). Ans. 5-8.1 1 Throughout this opinion, we refer to (1) the Appeal Brief filed June 15, 2010 (“App. Br.”); (2) the Examiner’s Answer mailed September 2, 2010 (“Ans.”); and (3) the Reply Brief filed November 1, 2010 (“Reply Br.”). Appeal 2011-004355 Application 11/393,739 3 ISSUE Under § 103, has the Examiner erred in rejecting claim 1 by finding that Kenyon, Day and Henderson collectively would have taught or suggested, serially designating each record in the target database as a test record and comparing the test record to all other records in the target database to generate the plurality of similarity patterns such that every single existing record in the target database serves as a test record at least once? ANALYSIS Rejection of Claims 1-15 Under 35 U.S.C. § 103 On this record, we find the Examiner erred in the obviousness rejection of representative claim 1 which recites, in pertinent part, serially designating each record in the target database as a test record and comparing the test record to all other records in the target database to generate the plurality of similarity patterns such that every single existing record in the target database serves as a test record at least once. Because of our decision on this disputed element, we do not reach the any other rejections made by the Examiner or arguments in response thereto presented by Appellants. The Examiner finds the disputed limitation in Henderson, Day, and Kenyon. Ans. 6, 15 (citing Henderson, claim 1; Day ¶ [0054]; and Kenyon ¶ [0062]). Specifically, the Examiner finds Day’s teaching of querying a database for “all records implies” serially processing all records. Ans. 6, 15- 16. Day’s teaching of reviewing and determining which records meet the Appeal 2011-004355 Application 11/393,739 4 query “implies” comparing all test records to all other records in the database. Id. The Examiner, according to Appellants, relies on “a set of logical conditions, i.e., a query, generated outside of the database that is tested against the records of the database to find a record that matches the logical conditions of the query.” App. Br. 13-14. Day does not teach “serially designating each record” because Day teaches generating a query and testing that query against the records in the database to find a record that matches the logical conditions of a query. App. Br. 14. Appellants argue “serially” means every single record in the database takes a turn, rather than the query process followed in Day. Reply Br. 4-5. Appellants further assert that Kenyon and Henderson are not relied on for the disputed limitation and the specific citations to Kenyon do not teach the disputed limitation. App. Br. 12, 14-18; Reply Br. 5. We focus on the recitation in claim 1 that the comparison is done “serially.” “Serially” is not defined in the Specification, or even mentioned. However, the Specification does describe “each comparison record may be compared to the test record in the target database in turn.” Spec. ¶ [037] (emphasis added). This comports with the argument made by Appellants. Reply Br. 4-5. This is also consistent with the meaning one of ordinary skill in the art would ascribe to the term. This is also consistent with the dictionary definition of “serial,” “arranged or happening in a series.” http://www.merriam-webster.com/dictionary/serial. Appeal 2011-004355 Application 11/393,739 5 We disagree with the Examiner’s finding that the disclosure of Day of querying a database for “all records implies” serially processing all records. Ans. 6, 15-16. Even assuming as correct the Examiner’s finding that Day discloses reviewing records and determining which records match the conditions of the query, the Examiner does not adequately explain how determining records that match the conditions of a query “implies” that the records are processed serially. Indeed, the Examiner merely states that Day discloses that records are matched to a query but does not indicate that Day also discloses how such matching is performed, much less that any processing is performed “serially.” While the Examiner may have intended that serially processing records is “inherent” in Day, rather than “implied,” we still cannot agree with the Examiner. “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citing Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1269, 20 U.S.P.Q.2d 1746, 1749 (Fed.Cir.1991)). Assuming inherency was intended does not save the rejection. The process used in Day depends on how the query is constructed. As Appellants argue, a query is “a set of logical conditions.” A query might be based on any number of conditions, which are not necessarily serial and need not include serial processing. This is not sufficient to “make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.” Id. Constrained by this record, we do not sustain the rejection of claim 1. Appeal 2011-004355 Application 11/393,739 6 We therefore reverse the rejection of claim 1 and claims 6 and 11, which have a similar limitation. Claims 2-5 depend from claim 1. Claims 7- 10 depend on claim 6. Claims 12-15 depend on claim 11. For reasons already discussed, the rejections of claims 2-5, 7-10, and 12-15 are reversed. CONCLUSION The Examiner erred in rejecting claims 1-15 under § 103. ORDER The Examiner’s decision rejecting claims 1-15 is reversed. REVERSED gvw Copy with citationCopy as parenthetical citation