Ex Parte Murthy et al

Patent Trial and Appeal Board

Feb 19, 2013

11286873 (P.T.A.B. Feb. 19, 2013)

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.
11/286,873 11/22/2005 Ravi Murthy 50277-2865 1506
42425 7590 02/19/2013
HICKMAN PALERMO TRUONG BECKER BINGHAMWONG/ORACLE
1 Almaden Boulevard
Floor 12
SAN JOSE, CA 95113
EXAMINER
JOHNSON, JOHNESE T
ART UNIT PAPER NUMBER
2166
MAIL DATE DELIVERY MODE
02/19/2013 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 RAVI MURTHY, SIVASANKARAN CHANDRASEKAR,
ERIC SEDLAR, and NIPUN AGARWAL
____________
Appeal 2010-008556
Application 11/286,873
Technology Center 2100
____________

Before MICHAEL R. ZECHER, BRIAN J. MCNAMARA, and
RAMA G. ELLURU, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION ON APPEAL
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-9, 11-20, and 22. Supp. App. Br. 2. Claims 10 and 21
were cancelled. Id. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter a new ground of rejection.
Appellants’ Invention
Appellants invented a method and machine-readable storage medium
for efficiently maintaining Extensible Markup Language (“XML”) index
structures in a database system. Abstract. Instead of immediately
synchronizing the XML index structures after every change that is submitted
to the database system, the claimed invention stores the changes in a
PENDING table. Id. The claimed invention periodically synchronizes the
XML index structures using the information stored in the PENDING table.
Id. However, between synchronizations, the XML index structures may be
in either stale or current mode. Id. If the XML index structures are in stale
mode, a request to access the indexed information will use the XML index
structures to find the desired indexed information without checking the
PENDING table. Id. If the XML index structures are in current mode, a
request to access the indexed information will search the XML index
structures and check the PENDING table to determine: (1) whether the
indexed information has been updated or deleted; and (2) whether
information relevant to the request has been inserted or updated. Id.
Illustrative Claim
Claims 1, 12-20, and 22 are independent claims. Independent claim 1
is illustrative:
1. A method comprising:
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when changes are made to indexed information, storing
one or more indications that an index has to be changed,
wherein the step of storing one or more indications is
performed in a first operation that is synchronous relative to the
changes, wherein the index is not changed during said first
operation;
in response to detecting that certain conditions have been
satisfied, performing a second operation that updates the index
and removes the one or more indications that the index has to
be changed, wherein the second operation is performed
asynchronously relative to the changes made to the indexed
information; and
after the first operation has been completed and before
the second operation is performed:
receiving a request to access the indexed information;
and
in response to receiving the request:
using the index to access the indexed information even
though the changes are not yet reflected in the index;
reading data to determine whether the index is
maintained in asynchronous stale mode or in asynchronous
current mode;
if the index is maintained in asynchronous stale mode,
then using the index to return the indexed information; and
if the index is maintained in asynchronous current mode,
then:
determining, from the one or more indications, whether
any portion of the accessed information has been deleted or
updated, and if a portion of the accessed information has been
deleted or updated, not responding to the request with said
portion of the accessed information; and
examining the one or more indications for inserted and
updated information that relates to the request.

Prior Art Relied Upon
King US 5,745,904 Apr. 28, 1998
Zbikowski US 5,878,410 Mar. 2, 1999
Chang US 6,584,459 B1 June 24, 2003
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Rejections on Appeal
Claims 1, 2, 4, 5, 8, 9, 11-13, 15, 19, 20, and 22 were rejected under
35 U.S.C. § 103(a) as being unpatentable over the combination of Zbikowski
and King. Ans. 3-7.
Claims 3, 6, 7, 14, 17, and 18 were rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Zbikowski, King, and Chang.
Id. at 7-9.
Examiner’s Findings and Conclusions
The Examiner finds that Zbikowski discloses running a query against
an index in the usual manner. Ans. 4 and 10 (citing to col. 5, ll. 37-51). The
Examiner finds that from a user’s perspective, the information requested by
Zbikowski’s query is stale because the user is not updating the data. Id. at
10. Therefore, the Examiner finds that Zbikowski’s disclosure of running
the query in the usual manner constitutes using the index to return the
indexed information while “the index is maintained in asynchronous stale
mode,” as required by independent claim 1. Id.
Appellants’ Contentions
Appellants contend that Zbikowski—namely at column 5, lines 37-
51—fails to teach that “if the index is maintained in asynchronous stale
mode, then using the index to return the indexed information[,]” as recited in
independent claim 1. App. Br. 7-8. In particular, Appellants argue that it is
unclear what portion of Zbikowski’s cited disclosure teaches the claimed
“asynchronous stale mode.” Id. Moreover, Appellants assert that Zbikowski
updates a view index before processing a query and, therefore, directly
contradicts independent claim 1. Id. (citing to col. 9, ll. 48-59).
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In response to the Answer, Appellants disagree with the Examiner’s
position that the information returned from Zbikowski’s view index is stale
merely because the user is not updating the data. Reply Br. 2. Appellants
reiterate that because Zbikowski explicitly teaches that the view index is
always current before processing a query, Zbikowski’s view index is not
used until ever update has been applied to the view index. Reply Br. 2-3
(citing to col. 9, ll. 58-59). Appellants assert that such an approach is in
direct conflict with independent claim 1, which requires using an index
before it is updated. Id. at 3.

II. ISSUE
The dispositive issue before us is whether the Examiner erred in
determining that the combination of Zbikowski and King teaches “if the
index is maintained in asynchronous stale mode, then using the index to
return the indexed information[,]” as recited in independent claim 1?

III. ANALYSIS
35 U.S.C. § 103(a)—Combination of Zbikowski and King
Claim 1
Based on the record before us, we discern error in the Examiner’s
obviousness rejection of independent claim 1, which recites, inter alia, “if
the index is maintained in asynchronous stale mode, then using the index to
return the indexed information[.]”
We begin our analysis by noting that since this dispute turns on the
Examiner’s factual findings with respect to Zbikowski, we confine our
discussion to that reference. The Examiner takes the position that from a
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user’s perspective, Zbikowski discloses that a query run against the view
index returns information that has not been updated, i.e., the claimed
“asynchronous stale” mode, because the user is not updating the data. See
Ans. 10 (citing to col. 5, ll. 37-51). However, there is no indication in
Zbikowski that the view index is maintained in a mode that would cause the
index to return query results that have not been updated. Instead, as
Appellants point out, Zbikowski ensures that the view index is current by
updating the view index prior to processing a query. App. Br. 8; Reply Br.
2-3 (citing to col. 9, ll. 48-59). Therefore, contrary to the Examiner’s
position, Zbikowski teaches that the query run against the view index returns
current or updated information—not stale information. As such, we agree
with Appellants that Zbikowski fails to teach the disputed claim limitation.
Because the Examiner’s position with respect to Zbikowski does not
properly account for the disputed claim limitation, we need not reach the
merits of Appellants’ other arguments. It follows that the Examiner erred in
determining that the combination of Zbikowski and King renders
independent claim 1 unpatentable.
Claims 2, 4, 5, 8, 9, 11-13, 15, 19, 20, and 22
Because claims 2, 4, 5, 8, 9, 11-13, 19, 20, and 22 incorporate by
reference the same disputed claim limitation as independent claim 1, the
Examiner erred in rejecting these claims for the same reasons set forth in our
discussion of independent claim 1.
35 U.S.C. § 103(a)—Combination of Zbikowski, King, and Chang
Claims 3, 6, 7, 14, 17, and 18
Claims 3, 6, 7, 14, 17, and 18 incorporate by reference the same
disputed claim limitation as independent claim 1. As applied by the
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Examiner, King and Chang do not remedy the above-noted deficiency in
Zbikowski. As a result, the Examiner has erred in concluding that the
combination of Zbikowski, King, and Chang renders claims 3, 6, 7, 14, 17,
and 18 unpatentable for the same reason set forth in our discussion of
independent claim 1.

IV. NEW GROUND OF REJECTION
We enter the following new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
35 U.S.C. § 101 Rejection
Claims 12-20 and 22
Claims 12-20 and 22 recite, in pertinent part, “[a] machine-readable
storage medium storing instructions which, when executed by one or more
processors, cause the one or more processors to perform the steps of . . . .”
According to Appellants’ Specification, a machine-readable medium
may include transmission media, such as acoustic or light waves generated
during radio-wave and infra-red data communications. ¶ [0061].
Consequently, we conclude that the claimed “machine-readable storage
medium” can be broadly, but reasonably construed to encompass no more
than a transitory, propagating signal. “A transitory, propagating signal . . . is
not a ‘process, machine, manufacture, or composition of matter’ [under 35
U.S.C. § 101]” and, therefore, does not constitute statutory subject matter
under § 101. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007).
Moreover, because claims 12-20 and 22 are not limited to a non-transitory,
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tangible medium within one of the four statutory classes of § 101,1 we
conclude that these claims are directed to non-statutory subject matter.

V. CONCLUSIONS
For the foregoing reasons, the Examiner has erred in rejecting: (1)
claims 1, 2, 4, 5, 8, 9, 11-13, 15, 19, 20, and 22 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Zbikowski and King; and (2)
claims 3, 6, 7, 14, 17, and 18 under 35 U.S.C. § 103(a) as being unpatentable
over the combination of Zbikowski, King, and Chang. However, we have
entered a new ground of rejection against claims 12-20 and 22 under 35
U.S.C. § 101 as being directed to non-statutory subject matter.

VI. DECISION
We reverse the Examiner’s decision to reject claims 1-9, 11-20, and
22 under 35 U.S.C. § 103(a). However, we newly reject claims 12-20 and
22 under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
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.”

1 Claims that are so broad that they read on nonstatutory as well as statutory
subject matter are unpatentable. Cf. In re Lintner, 458 F.2d 1013, 1015
(CCPA 1972) (citation omitted) (“Claims which are broad enough to read on
obvious subject matter are unpatentable even though they also read on
nonobvious subject matter.”). “A claim drawn to such a computer readable
medium that covers both transitory and non-transitory embodiments may be
amended to narrow the claim to cover only statutory embodiments to avoid a
rejection under 35 U.S.C. § 101 by adding the limitation ‘non-transitory’ to
the claim.” David J. Kappos, Subject Matter Eligibility of Computer
Readable Media, 1351 OFF. GAZ. PAT. OFFICE 212 (Feb. 23, 2010).
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37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of proceedings (37 C.F.R. § 1.197 (b)) 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
37 C.F.R. § 41.52 by the Board upon the same record. . . .

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).

REVERSED
37 C.F.R. § 41.50(b)

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