William Andrew. Triebel

Patent Trials and Appeals Board

Feb 4, 2020

13790252 - (D) (P.T.A.B. Feb. 4, 2020)

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.
13/790,252 03/08/2013 William Andrew TRIEBEL 2011-0048US01 5740
74739 7590 02/04/2020
Potomac Law Group, PLLC (Oracle International)
8229 Boone Boulevard
Suite 430
Vienna, VA 22182
EXAMINER
COLEMAN, CHARLES P.
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
02/04/2020 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):
bgoldsmith@potomaclaw.com
eofficeaction@appcoll.com
patents@potomaclaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte WILLIAM ANDREW TRIEBEL
____________________

Appeal 2018-008559
Application 13/790,252
Technology Center 3600
____________________

Before DENISE M. POTHIER, CARL S. SILVERMAN, and
JAMES W. DEJMEK, Administrative Patent Judges.

DEJMEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 3–7, 11, 13–16, and 18–23. Appellant has canceled claims 2,
8–10, 12, and 17. See Appeal Br. 24–28. We have jurisdiction over the
remaining pending claims under 35 U.S.C. § 6(b).
We affirm.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2017). Appellant identifies
Oracle International Corporation as the real party in interest. Appeal Br. 3.
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STATEMENT OF THE CASE
Introduction
Appellant’s disclosed and claimed invention generally relates to “a
computer system that manages clinical data.” Spec. ¶ 2. More specifically,
Appellant describes a “cohort identification system.” Spec. ¶ 6. According
to the Specification, a “cohort” refers to a set of related or similar pieces of
data, such as “a group of patients with identical or similar characteristics” or
“a set of one or more related adverse event cases, or a set of one or more
related medical records.” Spec. ¶¶ 5, 17. In a disclosed embodiment, a
cohort identification system identifies a cohort (e.g., of patients or adverse
event cases) by retrieving metadata of a data source to create a structured
query language (SQL) query based on the retrieved metadata and executing
the SQL query on a data source (e.g., a drug safety database) to create a case
series (i.e., list) of adverse event cases. Spec. ¶¶ 3, 6; see also Spec. ¶¶ 17,
19. A report based on the case series is generated. Spec. ¶ 6.
Claim 1 is representative of the subject matter on appeal and is
reproduced below with the disputed limitation emphasized in italics:
1. A non-transitory computer-readable medium having
instructions stored thereon that, when executed by a processor,
cause the processor to identify a cohort, the identifying
comprising:
retrieving, by a query builder, metadata from a repository
that comprises information about one or more data fields of a
drug safety database, the metadata including a data type and
information for creating a structured query language (SQL)
query for each data field of the one or more data fields, the drug
safety database including a plurality of adverse event records,
each adverse event record including a patient identifier and drug
safety data associated with the patient;
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creating, by the query builder, the SQL query for the drug
safety database based on the retrieved metadata, the SQL query
including at least one SQL statement and at least one data field
of the drug safety database;
applying, by a query compiler, one or more SQL syntax
rules to the SQL query to determine that the SQL query complies
with the SQL syntax rules;
storing, by the query compiler, the SQL query in a query
repository;
retrieving, by the query compiler, the SQL query from the
query repository, the SQL query including the SQL statement
and the data field of the drug safety database;
compiling, by the query compiler, the SQL query into an
executable format;
executing, by the query compiler, the executable format of
the SQL query on the drug safety database to create a single case
series; and
generating, by a reporting case series application
programming interface, a report, based on the single case series,
including a visualization of the single case series.

The Examiner’s Rejections
1. Claims 1, 3–7, 11, 13–16, and 18–23 stand rejected under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Final
Act. 3–6.
2. Claims 1, 3–7, 11, 13–16, and 18–23 stand rejected under pre-
AIA 35 U.S.C. § 103(a) as being unpatentable over Bellin et al. (US
2009/0076845 A1; Mar. 19, 2009) (“Bellin”); Bhattacharya et al. (US
2008/0319958 A1; Dec. 25, 2008) (“Bhattacharya”); Oracle® Argus Safety
User’s Guide, Release 6.0.1, E15952-03 (July 2011) (“Oracle”); and
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Krishnaprasad et al. (US 2006/0235839 A1; Oct. 19, 2006)
(“Krishnaprasad”). Final Act. 7–13.

ANALYSIS2
Rejection under 35 U.S.C. § 101
Appellant disputes the Examiner’s conclusion that the pending claims
are directed to patent-ineligible subject matter. Appeal Br. 7–17; Reply
Br. 2–3. In particular, Appellant argues that “cohort identification” is not an
abstract idea recognized by the courts. Appeal Br. 8–9. Moreover,
Appellant asserts the claimed invention is patent eligible because it
“improves the computer-related technology of database queries.” Appeal
Br. 13–15 (emphasis omitted) (citing Enfish, LLC v. Microsoft Corp., 822
F.3d 1327 (Fed. Cir. 2016)). In addition, Appellant argues the claims do not
merely recite conventional features, but instead recite a non-conventional
and non-generic arrangement of features that amount to an inventive
concept. Appeal Br. 15–17 (citing BASCOM Global Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)); Reply Br. 7–8.
Further, Appellant challenges the Examiner’s findings that the claims recite
computer functions that are well-understood, routine, and conventional.
Reply Br. 2–3.
The Supreme Court’s two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice Corp. v. CLS Bank Int’l, 573

2 Throughout this Decision, we have considered the Appeal Brief, filed
November 29, 2017 (“Appeal Br.”); the Reply Brief, filed August 27, 2018
(“Reply Br.”); the Examiner’s Answer, mailed June 27, 2018 (“Ans.”); and
the Final Office Action, mailed June 20, 2017 (“Final Act.”), from which
this Appeal is taken.
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U.S. 208, 217 (2014). In addition, the Office has published revised guidance
for evaluating subject matter eligibility under 35 U.S.C. § 101, specifically
with respect to applying the Alice framework. USPTO, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Office
Guidance”). If a claim falls within one of the statutory categories of patent
eligibility (i.e., a process, machine, manufacture, or composition of matter)
then the first inquiry is whether the claim is directed to one of the judicially
recognized exceptions (i.e., a law of nature, a natural phenomenon, or an
abstract idea). Alice, 573 U.S. at 217. As part of this inquiry, we must “look
at the ‘focus of the claimed advance over the prior art’ to determine if the
claim’s ‘character as a whole’ is directed to excluded subject matter.”
Affinity Labs of Tex., LLC v. DirecTV, LLC, 838 F.3d 1253, 1257–58 (Fed.
Cir. 2016). Per Office Guidance, this first inquiry has two prongs of
analysis (i) does the claim recite a judicial exception (e.g., an abstract idea),
and (ii) if so, is the judicial exception integrated into a practical application.
84 Fed. Reg. at 54. Under the Office Guidance, if the judicial exception is
integrated into a practical application, see infra, the claim passes muster
under § 101. 84 Fed. Reg. at 54–55. If the claim is directed to a judicial
exception (i.e., recites a judicial exception and does not integrate the
exception into a practical application), the next step is to determine whether
any element, or combination of elements, amounts to significantly more than
the judicial exception. Alice, 573 U.S. at 217; 84 Fed. Reg. at 56.
Here, we conclude Appellant’s claims recite an abstract idea because
they recite mental processes. If a claim, under its broadest reasonable
interpretation, covers performance in the mind but for the recitation of
generic computer components, then it is still in the mental processes
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category unless the claim cannot practically be performed in the mind. See
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed.
Cir. 2016) (“[W]ith the exception of generic computer-implemented steps,
there is nothing in the claims themselves that foreclose them from being
performed by a human, mentally or with pen and paper.”); see also
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir.
2011) (holding that the incidental use of a “computer” or “computer readable
medium” does not make a claim otherwise directed to a process that “can be
performed in the human mind, or by a human using a pen and paper” patent
eligible); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
71 (2012) (explaining mental processes are not patentable); 84 Fed. Reg. at
52–53 nn.14–15 (explaining that concepts performed in the human mind
include observations, evaluations, judgments, and opinions).
More specifically, Appellant’s claims are directed to identifying a
cohort of data using an SQL query on a database. This is consistent with
how Appellant describes the claimed invention. See Spec. ¶¶ 6 (describing
an embodiment of the claimed invention as “a cohort identification system
that identifies a cohort”); 17 (describing using a query on a database, e.g., a
medical history database, to identify a cohort (i.e., “a set of one or more
related adverse event cases, or a set of one or more related medical records”)
of data); Appeal Br. 5 (explaining the independent claims are directed to
“identifying a cohort”). Identifying a cohort of data using an SQL query on
a database (i.e., searching a database to identify related events) is an
evaluation that can be performed by a human, mentally or with pen and
paper.
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Consistent with our Office Guidance and case law, we conclude that
identifying a cohort of data using an SQL query on a database is a mental
process and, thus, an abstract idea. See 84 Fed. Reg. at 52; see also Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016)
(concluding that “analyzing information by steps people go through in their
minds, or by mathematical algorithms, without more, as essentially mental
processes within the abstract-idea category”); CyberSource, 654 F.3d at
1371–72 (concluding claims directed to “detecting credit card fraud based
on information relating [to] past transactions” can be performed in the
human mind and were drawn to a patent-ineligible mental process);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir.
2016) (concluding claims directed to “collecting and analyzing information
to detect misuse and notifying a user when misuse is detected” to be mental
processes within the abstract-idea category); Voter Verified, Inc. v. Election
Sys. & Software LLC, 887 F.3d 1376, 1385–86 (explaining the concepts of
voting, verifying the vote, and submitting the vote for tabulation to be
abstract).
Claim 1 is reproduced below and includes the following claim
limitations that recite identifying a cohort of data using an SQL query on a
database, emphasized in italics:
1. A non-transitory computer-readable medium having
instructions stored thereon that, when executed by a processor,
cause the processor to identify a cohort, the identifying
comprising:
retrieving, by a query builder, metadata from a repository
that comprises information about one or more data fields of a
drug safety database, the metadata including a data type and
information for creating a structured query language (SQL)
query for each data field of the one or more data fields, the drug
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safety database including a plurality of adverse event records,
each adverse event record including a patient identifier and drug
safety data associated with the patient;
creating, by the query builder, the SQL query for the drug
safety database based on the retrieved metadata, the SQL query
including at least one SQL statement and at least one data field
of the drug safety database;
applying, by a query compiler, one or more SQL syntax
rules to the SQL query to determine that the SQL query complies
with the SQL syntax rules;
storing, by the query compiler, the SQL query in a query
repository;
retrieving, by the query compiler, the SQL query from the
query repository, the SQL query including the SQL statement
and the data field of the drug safety database;
compiling, by the query compiler, the SQL query into an
executable format;
executing, by the query compiler, the executable format of
the SQL query on the drug safety database to create a single case
series; and
generating, by a reporting case series application
programming interface, a report, based on the single case series,
including a visualization of the single case series.
More particularly, the concept of identifying a cohort of data using an
SQL query on a database comprises (i) gathering information corresponding
to data fields of a database to create an SQL query (i.e., the claimed steps of
retrieving metadata for creating an SQL query for each data field of the
database and creating an SQL query); and (ii) performing the SQL query on
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the database to identify a cohort (i.e., the claimed step of executing the SQL
query on the database to create a single case series).3
Because the claim recites a judicial exception, we next determine
whether the claim integrates the judicial exception into a practical
application. 84 Fed. Reg. at 54. To determine whether the judicial
exception is integrated into a practical application, we identify whether there
are “any additional elements recited in the claim beyond the judicial
exception(s)” and evaluate those elements to determine whether they
integrate the judicial exception into a recognized practical application.
84 Fed. Reg. at 54–55 (emphasis added); see also Manual of Patent
Examining Procedure (“MPEP”) § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018).
Here, we find the additional limitation(s) do not integrate the judicial
exception into a practical application. More particularly, the claims do not
recite (i) an improvement to the functionality of a computer or other
technology or technical field (see MPEP § 2106.05(a)); (ii) a “particular
machine” to apply or use the judicial exception (see MPEP § 2106.05(b));
(iii) a particular transformation of an article to a different thing or state
(see MPEP § 2106.05(c)); or (iv) any other meaningful limitation
(see MPEP § 2106.05(e)). See 84 Fed. Reg. at 55.
Rather, the additional limitations merely provide additional detail
regarding, for example, the contents of the metadata, fields in a drug safety
database, and the SQL query. Additionally, limitations regarding storing the

3 According to the Specification, a case series “is a set of one or more
adverse event cases” and a cohort “is a set of one or more related adverse
event cases.” Spec. ¶ 17.
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SQL query in a repository, retrieving the SQL from the repository, and
generating a report based on the created single case series are the types of
extra-solution activities (i.e., in addition to the judicial exception) the courts
have determined to be insufficient to transform judicially excepted subject
matter into a patent-eligible application. See MPEP § 2106.05(g); see also
Bilski v. Kappos, 561 U.S. 593, 612 (2010) (holding the use of well-known
techniques to establish inputs to the abstract idea as extra-solution activity
that fails to make the underlying concept patent eligible); Elec. Power,
830 F.3d at 1355 (explaining that “selecting information, by content or
source, for collection, analysis, and display does nothing significant to
differentiate a process from ordinary mental processes”); Elec. Power, 830
F.3d at 1354 (recognizing “that merely presenting the results of abstract
processes of collecting and analyzing information, without more (such as
identifying a particular tool for presentation), is abstract as an ancillary part
of such collection and analysis”); Bancorp Servs., L.L.C. v. Sun Life Assur.
Co. of Can., 771 F. Supp. 2d 1054, 1066 (E.D. Mo. 2011) aff’d, 687 F.3d
1266 (Fed. Cir. 2012) (explaining “storing, retrieving, and providing data . . .
are inconsequential data gathering and insignificant post solution activity”).
Contrary to Appellant’s assertions (see, e.g., Appeal Br. 16–17), the
additional limitations recited in the dependent claims also fail to confer
patent eligibility to the claims. Rather, the dependent claims provide
additional extra-solution activities (e.g., “storing the single case series in a
case series repository,” as in claim 3; “retrieving the single case series from
the case series repository using the reporting case series application
programming interface,” as in claim 4; or “displaying the report within the
reporting software application,” as in claim 5). As discussed above, these
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limitations are insufficient to transform judicially excepted subject matter
into a patent-eligible application.
In addition, we disagree with Appellant (see, e.g., Appeal Br. 13–15)
that the claims recite an improvement to the computer-related technology of
database queries. As the Examiner finds (Final Act. 4), the claims do not
improve the functioning of the computer, but instead merely use generic
computer components (e.g., a processor, memory, storage (i.e., databases
and repositories)) that operate in their normal, expected manner. See also
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258–59 (Fed. Cir.
2014). Similarly, as described in the Specification, the query builder and
query compiler modules merely perform standard data processing activities
(e.g., providing a user interface to create a query from selected elements, and
converting a query into an executable format). See Spec. ¶¶ 60–64.
Additionally, as the court in Enfish explained, “the first step in the Alice
inquiry . . . asks whether the focus of the claims is on the specific asserted
improvement in computer capabilities . . . or, instead, on a process that
qualifies as an ‘abstract idea’ for which computers are invoked merely as a
tool.” Enfish, 822 F.3d at 1335–36. As discussed above, the focus of the
pending claims is on identifying a cohort of data using an SQL query on a
database and the recited computing elements are invoked merely as a tool.
See Enfish, 822 F.3d at 1335–36. The additional step of compiling the SQL
query into an executable format such that the SQL query may be executed
on the database merely uses generic computer functions (i.e., a query
compiler) as a tool to carry out the abstract idea. Further, we note that using
a computer to perform tasks more quickly or efficiently does not confer
patent eligibility on an otherwise ineligible abstract idea. See, e.g., Bancorp
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Servs., LLC v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278
(Fed. Cir. 2012) (“[T]he fact that the required calculations could be
performed more efficiently via a computer does not materially alter the
patent eligibility of the claimed subject matter.”).
For at least the foregoing reasons, the claims do not integrate the
judicial exception into a practical application.
Because we determine the claims are directed to an abstract idea or
combination of abstract ideas, we analyze the claims under step two of Alice
to determine if there are additional limitations that individually, or as an
ordered combination, ensure the claims amount to “significantly more” than
the abstract idea. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 77–
79). As stated in the Office Guidance, many of the considerations to
determine whether the claims amount to “significantly more” under step two
of the Alice framework are already considered as part of determining
whether the judicial exception has been integrated into a practical
application. 84 Fed. Reg. at 56. Thus, at this point of our analysis, we
determine if the claims add a specific limitation, or combination of
limitations, that is not well-understood, routine, conventional activity in the
field, or simply append well-understood, routine, conventional activities at a
high level of generality. 84 Fed. Reg. at 56. “Whether something is well-
understood, routine, and conventional to a skilled artisan at the time of the
patent is a factual determination.” Berkheimer v. HP, Inc., 881 F.3d 1360,
1369 (Fed. Cir. 2018).
Here, Appellant’s claims do not recite specific limitations (alone or
when considered as an ordered combination) that are not well-understood,
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routine, and conventional. Consistent with the Berkheimer Memorandum,4
we agree with the Examiner’s findings that the claims merely recite generic
computer components (e.g., a system comprising a processor and memory)
performing generic computing functions that are well-understood, routine,
and conventional (e.g., storing and retrieving data from a repository,
searching a database, and presenting the results of the database search).
See Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314,
1324–25 (Fed. Cir. 2016) (generic computer components, such as an
“interface,” “network,” and “database,” fail to satisfy the inventive concept
requirement); Alice, 573 U.S. at 226 (“Nearly every computer will include a
‘communications controller’ and a ‘data storage unit’ capable of performing
the basic calculation, storage, and transmission functions required by the
method claims.”); Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d
1315, 1329 (Fed. Cir. 2017) (explaining that receiving a request to execute a
database search and delivering records are routine computer functions that
can only be described as generic or conventional); see also Final Act. 5–6;
Ans. 8 (citing Spec. ¶¶ 20, 22–24 (describing hardware in generic terms with
high level of generality)).

4 On April 19, 2018, the Deputy Commissioner for Patent Examination
Policy issued a memorandum entitled: Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.) (i.e., “the Berkheimer Memorandum”)
(discussing the Berkheimer decision) (available at
https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF). Support for a finding that an element was well-understood,
routine, or conventional may be shown by citation to one or more court
decisions noting the well-understood, routine, conventional nature of the
element(s). See Berkheimer Memorandum 3–4.
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Appellant asserts that retrieving metadata from a repository, creating
an SQL query, storing the SQL query, and then retrieving the SQL query
from a query repository, when viewed in combination with the other claim
elements provides “a non-conventional and non-generic arrangement of
known, conventional pieces.” See Appeal Br. 16–17. We disagree.
In BASCOM, the court found “the patent describes how its particular
arrangement of elements is a technical improvement,” and, when construed
in favor of BASCOM,5 the claims may be read to improve an existing
technological process. BASCOM, 827 F.3d at 1350. As discussed above,
the claims do not improve an existing technological process, but rather use
the existing components to perform the abstract idea. Additionally, unlike
the arrangement of elements (i.e., installation of a filtering tool at a specific
location) in BASCOM, 827 F.3d at 1349–50, and contrary to Appellant’s
arguments (see Appeal Br. 16–17), Appellant’s claims do not recite a non-
conventional and non-routine arrangement of known elements.
Additionally, to the extent Appellant contends the claims do not seek
to preempt an abstract idea (see Appeal Br. 12), we are unpersuaded of
Examiner error. “‘[W]hile preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility.’” FairWarning IP, 839 F.3d at 1098 (quoting Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015));
see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63
(Fed. Cir. 2015) (“[T]hat the claims do not preempt all price optimization or
may be limited to price optimization in the e-commerce setting do not make

5 In BASCOM, BASCOM appealed the district court’s granting of a motion
to dismiss under Fed. R. Civ. P. 12(b)(6). BASCOM, 827 F.3d at 1341.
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them any less abstract.”). Further, “[w]here a patent’s claims are deemed
only to disclose patent ineligible subject matter under the Mayo framework,
as they are in this case, preemption concerns are fully addressed and made
moot.” Ariosa, 788 F.3d at 1379.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of claims 1, 3–7,
11, 13–16, and 18–23 as patent ineligible under 35 U.S.C. § 101.

Rejection under pre-AIA 35 U.S.C. § 103(a)
Appellant argues that Bhattacharya, as relied on by the Examiner,
alone or in combination with the other references of record, fails to teach
storing an SQL query in a query repository, and retrieving the SQL query
from a query repository. Appeal Br. 17–19; Reply Br. 4. Instead, Appellant
asserts Bhattacharya teaches storing “metadata elements” created by a query
encoder in a configuration repository. Appeal Br. 17 (citing Bhattacharya
¶¶ 7–9, emphasis omitted). Appellant asserts Bhattacharya’s metadata
elements are not SQL queries. Appeal Br. 17.
Bhattacharya generally relates to the “creation of SQL queries from a
combination of metadata elements.” Bhattacharya ¶ 7. Bhattacharya
teaches the metadata elements “are created by breaking up components of a
SQL statement . . . and storing the sub-components as metadata elements in
a repository.” Bhattacharya ¶ 7; see also Bhattacharya ¶ 9 (“The metadata
elements created by the query encoder 101 may be stored in the
configuration repository 102.”
In response, the Examiner finds the claim broadly recites that the SQL
query is stored, but does not recite how to implement the storing. Ans. 4.
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As such, the Examiner finds Bhattacharya teaches one way to store an SQL
query in a query repository. Ans. 4. Additionally, the Examiner indicates
that Appellant did not claim storing the “queries themselves.” Ans. 4
(emphasis omitted).
When construing claim terminology during prosecution before the
Office, claims are to be given their broadest reasonable interpretation
consistent with the Specification, reading claim language in light of the
Specification as it would be interpreted by one of ordinary skill in the art.
In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
However, the broadest reasonable interpretation differs from the broadest
possible interpretation. In re Smith Int’l, Inc., 871 F.3d 1375, 1383 (Fed.
Cir. 2017). The correct inquiry in giving a claim term its broadest
reasonable interpretation in light of the specification is “an interpretation
that corresponds with what and how the inventor describes his invention in
the specification, i.e., an interpretation that is ‘consistent with the
specification.’” Smith, 871 F.3d at 1382–83 (quoting In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997)). We presume that claim terms have their
ordinary and customary meaning. See In re Translogic Tech., Inc., 504 F.3d
1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning is the
meaning that the term would have to a person of ordinary skill in the art in
question.”) (Internal quotation marks omitted).
Contrary to the Examiner’s statement that the claims do not recite
storing the “queries themselves” (see Ans. 4, emphasis omitted), claim 1
expressly recites, “storing, by the query compiler, the SQL query in a query
repository.” Consistent with the Specification, the claims require storing the
SQL query—not merely sub-components (i.e., metadata elements) of the
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SQL query—in a query repository. Moreover, we note the claims also
differentiate storing metadata in a repository and storing the SQL query in a
query repository.
Because we find it dispositive that the Examiner has not shown by a
preponderance of evidence that Bhattacharya teaches storing the SQL query
rather than merely storing metadata elements in a configuration repository
(see Bhattacharya ¶¶ 7–9), we do not address other issues raised by
Appellant’s arguments related to the pending claims. See Beloit Corp. v.
Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (finding an administrative
agency is at liberty to reach a decision based on “a single dispositive issue”).
For the reasons discussed supra, we are persuaded of Examiner error.
Accordingly, we do not sustain the Examiner’s rejection of independent
claim 1. For similar reasons we do not sustain the Examiner’s rejection of
independent claims 11 and 16, which recite similar limitations. In addition,
we do not sustain the Examiner’s rejection under pre-AIA 35 U.S.C.
§ 103(a) of claims 3–7, 13–15, and 18–23, which depend directly or
indirectly therefrom.

CONCLUSION
We affirm the Examiner’s decision rejecting claims 1, 3–7, 11, 13–16,
and 18–23 under 35 U.S.C. § 101.
We reverse the Examiner’s decision rejecting claims 1, 3–7, 11, 13–
16, and 18–23 under pre-AIA 35 U.S.C. § 103(a).
Appeal 2018-008559
Application 13/790,252

18

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–7, 11,
13–16, 18–
23
101 Eligibility 1, 3–7, 11,
13–16,
18–23

1, 3–7, 11,
13–16, 18–
23
103(a) Bellin,
Bhattacharya,
Oracle,
Krishnaprasad
1, 3–7,
11, 13–
16, 18–23
Overall
Outcome
1, 3–7, 11,
13–16,
18–23

TIME PERIOD FOR RESPONSE
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