Roger Mitchell et al.Download PDFPatent Trials and Appeals BoardAug 6, 201914577611 - (D) (P.T.A.B. Aug. 6, 2019) Copy Citation 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. 14/577,611 12/19/2014 Roger Mitchell 83135892 4631 56436 7590 08/06/2019 Hewlett Packard Enterprise 3404 E. Harmony Road Mail Stop 79 Fort Collins, CO 80528 EXAMINER NGUYEN, LOAN T ART UNIT PAPER NUMBER 2158 NOTIFICATION DATE DELIVERY MODE 08/06/2019 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): chris.mania@hpe.com hpe.ip.mail@hpe.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ROGER MITCHELL, RENU VARSHNEYA, and AWNY K. AL-OMARI ____________________ Appeal 2018-006725 Application 14/577,6111 Technology Center 2100 ____________________ Before ROBERT E. NAPPI, ERIC S. FRAHM, and MICHAEL T. CYGAN, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s decision finally rejecting claims 1–14 and 21–27.2 Claims 15– 1 According to Appellants, Hewlett Packard Enterprise Development LP is the real party in interest (App. Br. 2). 2 Although the cover page of the Final Office Action mailed June 16, 2017 (see p. 1, box 2b) indicates the action is non-final, we consider the action to be final in view of (i) the inclusion of paragraph 16 at pages 21 through 22 regarding finality of the action; and (ii) the same basis for unpatentability being made in the previous action mailed November 17, 2016. Appeal 2018-006725 Application 14/577,611 2 20 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse the Examiners’ (i) rejection of claims 1–14 and 21–27 under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter (see Final Act. 2–3); and (ii) obviousness rejections of (a) claims 1–7 and 27 which are all based on the same base combination of Mozes (US 2004/0193629 A1; published Sept. 30, 2004) and Cunningham (US 2006/0230016 A1; published Oct. 12, 2006) (see Final Act. 5–9, 18–21), and (b) claims 8–14 and 21–26 which are based on the same base combination of Jakobsson (US 2004/0225639 A1; published Nov. 11, 2004, Breiling (US 7,667,628 B2; issued Feb. 23, 2010)), and Cunningham (see Final Act. 9–20). In light of Terminal Disclaimer filed May 15, 2018, we do not reach the Examiner’s non-statutory, obviousness-type double patenting rejection of claims 1–14 and 21–27 (see Final Act. 3–5).3 Disclosed Invention and Exemplary Claim The disclosed invention relates to database management systems, and more particularly to optimization of queries by generating a query plan for specifying data to be accessed (Spec. ¶ 1). Claims 1, 8, and 21 are independent, and each recite similar limitations pertaining to query optimization using a persistent sample table. Claims 1 and 8 reproduced 3 The Examiner incorrectly states in the heading of the statement of the obviousness-type double patenting rejection that “[c]laims 1-27, are provisionally rejected . . .” (see Final Act. 4). However, (i) claims 15–20 have been canceled (see Final Act. 2), therefore only claims 1–14 and 21–27 are actually rejected on this basis; and (ii) the obviousness-type double patenting rejection is made over claims 1–10 of U.S. Patent No. 9,141,664 (see Final Act. 4), so it is not a provisional rejection. Appeal 2018-006725 Application 14/577,611 3 below (with key limitations emphasized and bracketed lettering added), are illustrative of the claimed subject matter: 1. A computer-implemented method of optimization, comprising: [A] in response to a query that specifies a predicate and a first table, applying the predicate to a persistent sample table that is associated with the first table to identify rows from the persistent sample table for which the predicate is true, the persistent sample table comprising rows corresponding to a randomly selected subset of rows from the first table that are arranged in the persistent sample table in an order that is scrambled relative to the first table, the persistent sample table having been generated in response to a prior query; determining a cardinality of the query based on the number of rows that were identified as a result of applying the predicate to the persistent sample table; and generating a query plan based on the query and the cardinality. App. Br. 26 (Claims Appendix). 8. A computer system for optimization in a database management system (DBMS), the computer system comprising: a processor that is to execute stored instructions; and a memory device that stores instructions and data, the memory device storing: [B] a persistent sample table that is associated with a source table, the persistent sample table comprising rows corresponding to a scrambled, random subset of the rows of the source table; [C] computer-implemented code that determines, based on metadata and a specified threshold, whether the persistent sample table should be replaced, and in response to determining that the persistent sample table is to be replaced: deletes the persistent sample table; and generates a new version of the persistent sample table comprising rows corresponding to a new scrambled, random subset of rows from the source table; Appeal 2018-006725 Application 14/577,611 4 computer-implemented code that, in response to a query to the source table: applies a predicate of the query to a current version of the persistent sample table; determines a cardinality of the table based on a result of applying the predicate to the persistent sample table; and generates a query plan based on the query and the cardinality. App. Br. 27–28 (Claims Appendix). The Examiner’s Rejections (1) The Examiner rejected claims 1–14 and 21–27 based on the judicially created doctrine of non-statutory obviousness-type double patenting, over claims 1–10 of Mitchell (US 9,141,664 B2; issued Sept. 22, 2015). Final Act. 3–5. (2) Claims 1–14 and 21–27 stand rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Final Act. 2–3. (3) Claims 1–7 and 27 are rejected under 35 U.S.C. § 103(a) over the base combination of Mozes and Cunningham. Final Act. 5–9, 18–21. (4) Claims 8–14 and 21–26 are rejected under 35 U.S.C. § 103(a) over the base combination of Jakobsson, Breiling, and Cunningham. Final Act. 9–20. Principal Issues on Appeal Based on Appellants’ arguments in the Appeal Brief (App. Br. 7–35) and the Reply Brief (Reply Br. 2–8), the following issues are presented on appeal: (1) Have Appellants shown the Examiner erred in rejecting claims 1–14 and 21–27 under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter? Appeal 2018-006725 Application 14/577,611 5 (2) Have Appellants shown the Examiner erred in rejecting (a) claims 1–7 and 27 as being unpatentable under 35 U.S.C. § 103(a) over the base combination of Mozes and Cunningham; and/or (b) claims 8–14 and 21–26 as being unpatentable under 35 U.S.C. § 103(a) over the base combination of Jakobsson, Breiling, and Cunningham? ANALYSIS Obviousness-Type Double Patenting The Examiner rejected claims 1–14 and 21–27 based on the judicially created doctrine of non-statutory obviousness-type double patenting over claims 1–10 of Mitchell (Final Act. 3–5), indicating that “[a] timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground” (Final Act. 4). In response, Appellants (i) state that a Terminal Disclaimer was filed concurrently with the Appeal Brief on November 20, 2017; (ii) requested the Examiner withdraw the double patenting rejection; and (iii) in the event the rejection is not withdrawn, request the Board reverse the rejection in view of the aforementioned Terminal Disclaimer (App. Br. 8). In response, in the Examiner’s Answer mailed April 13, 2018, the Examiner stated “the Terminal Disclaimer filed on 11/27/2017 was disapproved because the Terminal Disclaimer did not specify the extent of the applicant’s ownership,” and therefore “the double patenting rejection is maintain[ed]” (Ans. 3). In response, Appellants filed a new corrected Terminal Disclaimer on May 15, 2018, after the mailing of the Examiner’s Answer. In the Reply Brief filed June 13, 2018, Appellants note that the Terminal Disclaimer filed Appeal 2018-006725 Application 14/577,611 6 May 15, 2018, was approved by the USPTO (see Reply Br. 9, Appendix- Terminal Disclaimer Approval), and again request reversal of the double patenting rejection (see Reply Br. 2). Because the Terminal Disclaimer filed May 15, 2018, was filed after the mailing of the Examiner’s Answer mailed April 13, 2018, we do not have the benefit of the Examiner’s review of the Terminal Disclaimer, and resultant determination of the sufficiency of the Terminal Disclaimer filed May 15, 2018. Therefore, upon further prosecution of this application, the Examiner should (i) evaluate the sufficiency of the Terminal Disclaimer filed May 15, 2018, to determine whether or not there is compliance with 37 C.F.R. § 1.321(c) or 1.321(d); and (ii) evaluate whether or not the Terminal Disclaimer therefore overcomes the Examiner’s rejection of claims 1–14 and 21–27 based on the judicially created doctrine of non-statutory obviousness-type double patenting over claims 1–10 of Mitchell. Accordingly, we do not reach the merits of the Examiner’s non-statutory obviousness-type double patenting rejection. Issue (1): Patent Eligibility Under 35 U.S.C. § 101 Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the Patent Act, which recites: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. There are, however, three judicially-created exceptions to the broad categories of patent-eligible subject matter in 35 U.S.C. § 101: “[l]aws of nature, natural phenomena, and abstract ideas.” Alice Corp. v. CLS Bank Appeal 2018-006725 Application 14/577,611 7 Int’l, 573 U.S. 208, 216 (2014) (quotation marks and citation omitted); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step framework, described in Mayo and Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–77). In accordance with that framework, we first determine what concept the claim is “directed to.” See id. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk . . . .”). Concepts determined to be abstract ideas, and, thus, patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. (15 How.) 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that “[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We Appeal 2018-006725 Application 14/577,611 8 view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Supreme Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, . . . and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”). If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. The PTO recently published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (2019) (hereinafter, “Revised Guidance”). Under that guidance, after determining that a claim falls within one of the statutory categories under § 101 (hereinafter, “Step 1”), we determine whether the claim recites: Appeal 2018-006725 Application 14/577,611 9 (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, mental processes, or certain methods of organizing human activities such as a fundamental economic practice or managing personal behavior or relationships or interactions between people) (hereinafter, “Step 2A, Prong 1”); and (2) additional elements that integrate the judicial exception into a practical application (see MANUAL OF PATENT EXAMINING PROCEDURE (MPEP) § 2106.05(a)–(c), (e)–(h) (9th Ed., Rev. 08.2017, Jan. 2018)) (hereinafter, “Step 2A, Prong 2”). Revised Guidance, 84 Fed. Reg. at 51–52, 54–55. Only if a claim: (1) recites a judicial exception, and (2) does not integrate that exception into a practical application, do we then evaluate whether the claim provides an inventive concept. Revised Guidance, 84 Fed. Reg. at 56; Alice, 573 U.S. at 217–18. For example, we look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception (hereinafter, “Step 2B”). Revised Guidance, 84 Fed. Reg. at 56. Step 1 Under Step 1 of the patent-eligibility inquiry under § 101, we determine whether a claim is directed to one of the four statutory categories of invention, i.e., a process, machine, manufacture, or composition of matter. Appeal 2018-006725 Application 14/577,611 10 In the instant case on appeal, claim 1, as well as claims 2–7 and 27 depending therefrom, recites “[a] computer-implemented method of optimization” that includes a number of steps, i.e., a process. A process is a statutory category of invention under § 101. Therefore, claims 1–7 and 27, as method claims, recite at least one of the enumerated categories (e.g., a process) of eligible subject matter in 35 U.S.C. § 101. Claim 8, as well as claims 9–14 depending therefrom, recites “[a] computer system for optimization in a database management system (DBMS)” comprising “a processor” and “a memory” (claim 8). Therefore, claims 8–14 depending therefrom, as system claims, recite at least one of the enumerated categories (e.g., machine and/or manufacture) of eligible subject matter in 35 U.S.C. § 101. Claim 21, as well as claims 22–26 depending therefrom, recites “[a] non-transitory machine-readable medium that stores machine-readable instructions that are executable by a processor in a database management system (DBMS).” Therefore, claims 21–26, as product claims, recite at least one of the enumerated categories (e.g., machine and/or manufacture) of eligible subject matter in 35 U.S.C. § 101. As a result, as to claims 1–14 and 21–27, we continue our analysis under Step 2A, Prong 1 of the Revised Guidance to determine whether the claims (1) recite a judicial exception (a law of nature, natural phenomenon, or subject matter within the enumerated groupings of abstract ideas above); and (2) are patent-eligible. Step 2A, Prong 1 Under Step 2A, Prong 1, we determine whether claims 1–14 and 21– 27 recite a judicial exception, e.g., an abstract idea. The Examiner Appeal 2018-006725 Application 14/577,611 11 concludes claims 1–14 and 21–27 are directed to an abstract idea (see Final Act. 2–3; Ans. 4). Specifically, the Examiner determines “[t]he claims are directed to processing query optimization, which is directed to an abstract idea of collecting, displaying, and manipulating data” (Final Act. 2; see also Ans. 4). The Examiner also concludes the claimed inventions contain elements which are “directed to nothing more than the performance of an abstract business practice on the Internet or using a conventional computer” (Ans. 4). Independent claim 1 recites to “[a] computer-implemented method of optimization” including (i) generating a “persistent sample table” in response to a query that specifies a predicate and a first table, “determining a cardinality of the query based on the number of rows,” and “generating a query plan based on the query and the cardinality.” Remaining independent claims 8 and 21 recite commensurate limitations drawn to a “computer system” (claim 8) and “[a] non-transitory machine-readable medium.” Appellants contend that the claims are not directed to merely any form of storing or manipulating data, but instead “are directed towards improving how a database management system determines a cardinality of a query as part of a process of generating a search plan for the query, by, inter alia, using a specific persistent sample table that has specific attributes as recited in the claims” (App. Br. 10). Citing paragraphs 30 through 32 of the Specification, Appellants contend the recited persistent sample tables are an improvement over prior approaches in that they “enable re-use of the persistent sample table for multiple queries,” and “allow for the persistent sample table to be searched by a single disk head seek and a fast sequential scan, rather than multiple disk head seeks” (App. Br. 10). Therefore, Appeal 2018-006725 Application 14/577,611 12 Appellants assert that “the pending claims are directed towards an improvement in computer functionality” and “an improvement of database management systems” that are able to service queries (App. Br. 11). And, Appellants contend that by analogy, the claims on appeal are most like the claims presented in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), since “both sets of claims pertain to databases and specifically include aspects related to using a specific type of table (i.e., a self referential table in Enfish, and a persistent sample table in the current claims)” (Reply Br. 3). We are persuaded by Appellants (see App. Br. 9–12; Reply Br. 2–3) that claims 1–14 and 21–27 are not directed to an abstract idea. Specifically, the computer-implemented method (claim 1), computer system (claim 8), and non-transitory machine-readable medium (claim 21) for optimization in a database management system do not fall into any of the subcategories of abstract ideas enumerated in the Revised Guidance, namely: (a) Mathematical concepts—mathematical relationships, mathematical formulas or equations, mathematical calculations; (b) Certain methods of organizing human activity—fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions); and (c) Mental processes—concepts performed in the human mind (including an observation, evaluation, judgment, opinion). Revised Guidance, 84 Fed. Reg. at 52 (footnotes omitted). Appeal 2018-006725 Application 14/577,611 13 Claims 1, 8, and 21 do not recite mathematical concepts, because there are no mathematical relationships, formulas, equations, or calculations analyzed or performed in the claim. Claims 1, 8, and 21 also do not recite mental processes, because the steps of responding to a query, generating a persistent sample table, operating on rows of tables and generating a query plan, are not something that can be practically performed in the human mind—these operations exist exclusively in the realm of computers. Finally, claims 1, 8, and 21 do not recite any of the methods of organizing human activity identified in the Revised Guidance. That is, claims 1, 8, and 21 relate to improving optimization in a database management system using tables to generate a query plan, not fundamental economic principles or practices, commercial or legal interactions, or managing personal behavior or relationships or interactions between people. See Revised Guidance. Accordingly, we determine claims 1, 8, and 21 do not recite an abstract idea because none of the limitations fall within the enumerated categories of abstract ideas under the Revised Guidance. Because claims 1, 8, and 21 do not recite subject matter falling into one of the recognized categories of abstract ideas (e.g., mathematical concepts, certain methods of organizing human activity, and mental processes), we are persuaded that the Examiner erred in finding claims 1–14 and 21–27 are directed to an abstract idea. Steps 2A, Prong 2 and 2B As we determine claims 1–14 and 21–27 are not directed to a judicial exception, we need not consider whether (i) these claims integrate the alleged judicial exception into a practical application under Step 2A, Prong 2, or (ii) there is an inventive concept under Step 2B. We are, therefore, Appeal 2018-006725 Application 14/577,611 14 persuaded the Examiner erred in rejecting claims 1–14 and 21–27 as being patent-ineligible for the same reasons. Issue (2): Obviousness Rejections We have reviewed the Examiner’s rejections (Final Act. 5–21) in light of Appellants’ arguments in the Appeal Brief (App. Br. 14–25), and Reply Brief (Reply Br. 5–8) that the Examiner has erred, along with the Examiner’s response to Appellants’ arguments found at pages 8 through 13 of the Examiner’s Answer. Appellants’ arguments that the Examiner has erred in rejecting the claims for obviousness over the base combination of either (i) Mozes and Cunningham (see App. Br. 14–17; Reply Br. 5–7), and/or (ii) Jakobsson, Breiling, and Cunningham (see App. Br. 16, 19–20; Reply Br. 5–7), are persuasive. Our reasoning follows. Issue (2)(a): Obviousness Rejection of Claims 1–7 and 27 With regard to claims 1–7 and 27 rejected over Mozes and Cunningham, although we agree with the Examiner that Cunningham teaches cardinality (see Final Act. 6), Mozes has not been shown to teach or suggest the recited persistent sample table which uses rows as claimed. In point of fact, Mozes’ paragraphs 14 and 72 only describe identifying on columns and not rows, as claimed. Appellants contend: the applied references, alone or in any reasonable combination, fail to disclose or suggest at least [limitation A,] “in response to a query that specifies a predicate and a first table, applying the predicate to a persistent sample table that is associated with the first table to identify rows from the persistent sample table for which the predicate is true, the persistent sample table Appeal 2018-006725 Application 14/577,611 15 comprising rows corresponding to a randomly selected subset of rows from the first table that are arranged in the persistent sample table in an order that is scrambled relative to the first table, the persistent sample table having been generated in response to a prior query.” (App. Br. 14–15). Appellants further contend that “none of the references disclose or suggest anything about forming a persistent sample table that is separate from the source table as part of their sampling or statistic gathering,” and “the references certainly do not disclose generating such a table ‘in response to a prior query’ and then using the table as part of an optimization of a second query, as recited” (App. Br. 15). We agree with Appellants’ contentions above regarding the failure of Mozes to teach or suggest limitation [A] recited in claim 1, as well as claims 2–7 and 27 depending therefrom. Based on the record before us, we are constrained to find the Examiner erred in rejecting independent claim 1, as well as claims 2–7 and 27 depending therefrom. Accordingly, we do not sustain the Examiner’s obviousness rejections of independent claim 1, as well as claims 2–7 and 27 depending therefrom, as being obvious over the base combination of Mozes and Cunningham. Issue (2)(b): Obviousness Rejection of Claims 8–14 and 21–26 With regard to claims 8–14 and 21–26 rejected over Jakobsson, Breiling, and Cunningham, although we agree with the Examiner that Cunningham teaches cardinality (see Final Act. 10), and Breiling teaches scrambling (see Final Act. 10), Breiling merely scrambles digits of rows of an information word in interleaver stages for data storage in audio CDs (see Appeal 2018-006725 Application 14/577,611 16 Breiling col. 1, ll. 6–22; col. 9, ll. 14–49; Abstract; Title). Thus, we agree with Appellants’ arguments (see App. Br. 16) that although Breiling does disclose “scrambling,” Breiling merely scrambles digits of a word and not rows of a table. As a result, we also agree with Appellants’ argument (see App. Br. 16) that Breiling does not relate to database management systems using tables as recited in claims 8 and 21. In addition, we agree with Appellants that Jakobsson teaches dynamic sampling (see App. Br. 15 citing Jakobsson ¶¶ 29, 30), which is an approach to optimizing queries that Appellants’ recited approach in the claims overcomes. We also agree with Appellants that “dynamic sampling is described in the specification as a contrasting approach to the disclosed subject matter, and over which the disclosed subject matter has various advantages. See Specification, ¶ [0030]-[0032].” App. Br. 15, n.2. As a result, we agree with Appellants (App. Br. 20) that Jakobsson has not been shown to teach or suggest the recited persistent sample table which uses rows as claimed. At best, the Examiner leaves us to speculate as to how/why one of ordinary skill in the art would modify Jakobsson and Breiling to meet the persistent table limitations recited in claims 8 and 21. We will not resort to speculation or assumptions to cure the deficiencies in the Examiner’s fact finding and/or reasoning. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967); Ex parte Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999) (unpublished) (“The review authorized by 35 U.S.C. [§] 134 is not a process whereby the examiner . . . invite[s] the [B]oard to examine the application and resolve patentability in the first instance.”). Appeal 2018-006725 Application 14/577,611 17 As a result, we agree with Appellants’ contention (App. Br. 20) that the references fail to disclose or suggest limitation [B], “a persistent sample table that is associated with a source table, the persistent sample table comprising rows corresponding to a scrambled, random subset of the rows of the source table” (claim 8; see also commensurate limitation of a persistent sample table in claim 21). Similarly, we agree with Appellants’ contentions (see App. Br. 22–24) that the applied references fail to teach or suggest the commensurate limitation of a persistent sample table in claim 21. Based on the record before us, we are constrained to find the Examiner erred in rejecting independent claims 8 and 21, as well as claims 9–14 and 22–26 depending respectively therefrom. Accordingly, we do not sustain the Examiner’s obviousness rejections of independent claims 8 and 21, as well as claims 9–14 and 22–26 depending respectively therefrom, as being obvious over the base combination of Jakobsson, Breiling, and Cunningham. CONCLUSIONS (1) After reviewing Appellants’ Terminal Disclaimer filed May 15, 2018, the Examiner should consider the appropriateness of maintaining, or not, the rejection of claims 1–14 and 21–27 based on the judicially created doctrine of non-statutory obviousness-type double patenting, over claims 1– 10 of Mitchell. (2) Appellants have shown the Examiner erred in rejecting claims 1–14 and 21–27 under 35 U.S.C. § 101, as being directed to a judicial exception (e.g., an abstract idea), without significantly more. Appeal 2018-006725 Application 14/577,611 18 (3) Appellants have shown the Examiner erred in rejecting (a) claims 1–7 and 27 as being unpatentable under 35 U.S.C. § 103(a) over the base combination of Mozes and Cunningham; and (b) claims 8–14 and 21–26 as being unpatentable under 35 U.S.C. § 103(a) over the combination of Jakobsson, Breiling, and Cunningham. DECISION For the above reasons, we do not reach the Examiner’s rejection of claims 1–14 and 21–27 based on the judicially created doctrine of non- statutory obviousness-type double patenting; and we reverse the Examiner’s decision to reject (1) claims 1–14 and 21–27 under 35 U.S.C. § 101; and (2) claims 1–14 and 21–27 as being unpatentable under 35 U.S.C. § 103(a). REVERSED Copy with citationCopy as parenthetical citation