Anguel Novoselsky et al.

Patent Trials and Appeals Board

Aug 12, 2019

13604402 - (D) (P.T.A.B. Aug. 12, 2019)

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.
13/604,402 09/05/2012 Anguel Novoselsky 50277-3999 8395
42425 7590 08/12/2019
HICKMAN PALERMO BECKER BINGHAM/ORACLE
1 Almaden Boulevard
Floor 12
SAN JOSE, CA 95113
EXAMINER
UDDIN, MD I
ART UNIT PAPER NUMBER
2169
NOTIFICATION DATE DELIVERY MODE
08/12/2019 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):
usdocket@h35g.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ANGUEL NOVOSELSKY, ZHEN HUA LIU, and
THOMAS BABY
____________________

Appeal 2018-005787
Application 13/604,402
Technology Center 2100
____________________

Before ALLEN R. MacDONALD, JEAN R. HOMERE, and MICHAEL M.
BARRY, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL1

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection
of claims 1–38, which are all of the pending claims. Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b). We REVERSE.

1 Appellants indicate the real party in interest is Oracle International
Corporation. App. Br. 1.
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Illustrative Claim
Illustrative claim 1 under appeal reads as follows (emphasis,
formatting, and bracketed materials added):
1. A computer-implemented method comprising:
[A.] storing an XML document in a database of a
database system;
[B.] generating an XML tree index on said XML
document,
[i.] wherein the XML tree index comprises a
plurality of index entries,
[ii.] each index entry of the plurality of index
entries having a one-to-one correspondence
with a node of said XML document;
[C.] storing the entire plurality of index entries in a
single row of a table in said database, comprising
at least one of:
[i.] storing the entire plurality of index entries in a
relational table, and
[ii.] storing at least one node of said XML
document in at least one of: said single row,
and a column of a table;
[D.] wherein the method is performed by one or more
computing devices.
References2
Van Der Linden et al. US 2005/0050059 A1 Mar. 3, 2005

2 All citations herein to this reference is by reference to the first named
inventor only.
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Rejections3
A.
The Examiner rejects claims 1–38 under 35 U.S.C. § 101 because “the
claimed invention is directed to a judicial exception (i.e., a law of nature, a
natural phenomenon, or an abstract idea) without significantly more,” that is,
because the subject matter of the claimed invention is patent-ineligible.
Final Act. 4–6.
As to this rejection, our decision as to the § 101 rejection of claim 1 is
determinative as to the § 101 rejection of all the claims. Therefore, except
for our ultimate decision, we do not discuss further herein the § 101
rejection of claims 2–38.
B. 35 U.S.C. § 103 4
The Examiner rejects claims 1, 8–10, 13, 15, 19, 26–28, 31, and 33
under 35 U.S.C. § 103 as being unpatentable over Van Der Linden. Final
Act. 7–10.
The Examiner rejects claims 2–7, 11, 12, 14, 16–18, 20–25, 29, 30,
32, and 34–38 under 35 U.S.C. § 103 as being unpatentable over Van Der
Linden in various combinations with other references. Final Act. 10–17.
As to these rejections, our decision as to the § 103 rejection of claim 1
is determinative as to the § 103 rejections of all the claims. Therefore,
except for our ultimate decision, we do not discuss further herein the § 103
rejection of claims 2–38.

3 All citations herein to the “Final Action” are to a Final Action mailed on
May 18, 2017.
4 For simplicity, we label any rejection under 35 U.S.C. § 103(a), as a
rejection under § 103.
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C.
The Examiner rejects claims 1–38 under 35 U.S.C. § 112(a) as failing
to comply with the written description requirement. Final Act. 6–7.
As to this rejection, our decision as to the § 112(a) rejection of claim 1
is determinative as to the § 112(a) rejection of all the claims. Therefore,
except for our ultimate decision, we do not discuss further herein the
§ 112(a) rejection of claims 2–38.

Issues on Appeal
Has the Examiner erred in rejecting claim 1 as being directed to
patent-ineligible subject matter?
Has the Examiner erred in rejecting claim 1 as being obvious?
Has the Examiner erred in rejecting claim 1 as failing to comply with
the written description requirement?

ANALYSIS5
We have reviewed the Examiner’s rejections in light of Appellants’
Appeal Brief and Reply Brief arguments that the Examiner has erred.
A. Section 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and

5 Any Manual of Patent Examining Procedure (MPEP) citations herein are to
MPEP Rev. 08.2017, January 2018.
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abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
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. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. 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, 192
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
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
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mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
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. (citation omitted) (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 (quotation marks 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.
B. USPTO Section 101 Guidance
The United States Patent and Trademark Office (USPTO) recently
published revised guidance on the application of § 101. USPTO’s
Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance,
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84 Fed. Reg. 50 (Jan. 7, 2019) (“Memorandum”). Under that guidance,
we first look to whether the claim recites:
(1) (see Memorandum Step 2A – Prong One) any judicial exceptions,
including certain groupings of abstract ideas (i.e., mathematical
concepts, certain methods of organizing human activity such as a
fundamental economic practice, or mental processes); and
(2) (see Memorandum Step 2A – Prong Two) additional elements that
integrate the judicial exception into a practical application (see MPEP
§ 2106.05(a)–(c), (e)–(h)).6
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that are not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum Step 2B.

6 We acknowledge that some of these considerations may be properly
evaluated under Step 2 of Alice (Step 2B of Office guidance). Solely for
purposes of maintaining consistent treatment within the Office, we evaluate
it under Step 1 of Alice (Step 2A of Office guidance). See USPTO’s January
7, 2019 Memorandum, “2019 Revised Patent Subject Matter Eligibility
Guidance.”
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C. Examiner’s § 101 Rejection – Alice/Mayo - Steps 1 and 2
C.1. 2019 Memorandum Step 2A – Prong One
Applying the Alice/Mayo analysis, the Examiner determines claim 1
recites an abstract idea.
Claim[] 1 . . . recites, in part[:]
generating an XML tree index on said XML document,
wherein the XML tree index comprises a plurality
of index entries, each index entry of the plurality of
index entries having a one-to-one correspondence
with a node of said XML document;
storing the entire plurality of index entries in a single row
of a table in said database, comprising at least one
of:
storing the entire plurality of index entries in a
relational table, and
storing at least one node of said XML document in
at least one of: said single row, and a column
of a table
These limitations describes the concepts idea of indexing
xml document using a relational table to store index entry. These
limitations as described is identified by court as abstract idea
[sic] as these functions can be performed mentally or with pen
& paper.
Final Act. 5 (emphasis and formatting added).
C.2. 2019 Memorandum Step 2A – Prong Two
Further applying the Alice/Mayo analysis, the Examiner determines
claim 1 is directed to an abstract idea.
There is no indication that the combination of elements improves
the functioning of a computer or improves any other technology.
Final Act. 6.
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C.3. 2019 Memorandum Step 2B
Further applying the Alice/Mayo analysis, the Examiner determines:
[T]hese claims do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the additional elements when considered both
individually and as an ordered combination do not amount to
significantly more than the abstract idea. The independent
claim[] l . . . recites the additional limitation of “wherein the
method is performed by one or more computing devices”. These
limitations are recited at a high level of generality and are recited
as performing generic computer functions which is routinely
used in computer applications that are well-understood, routine
and conventional activities. Thus, taken alone and in
combination, they do not amount to significantly more than the
above-identified judicial exception (the abstract idea).
Final Act. 5–6.
D. Appellants’ § 101 Arguments7
Appellants contend the Examiner erred in rejecting claim 1 as being
directed to patent-ineligible subject matter. Appellants particularly contend:
[B]y storing a whole index in a single table row, Claim 1
improves spatial locality, which accelerates the computer by
needing less I/O as explained above. Thus, the index storage
format of Claim 1 improves the performance of an XML storage
computer. . . . Therefore, the final Office action (page 6) is
factually erroneous for alleging, “There is no indication that the
combination of elements improves the functioning of a computer
or improves any other technology.”
App. Br. 11.

7 The contentions we discuss herein are determinative as to the § 101
rejection on appeal. Therefore, we do not discuss Appellants’ other § 101
contentions herein.
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E. Panel’s § 101 Analysis
We are persuaded by Appellants’ argument. Claim 1 is directed to
constructing a tree representing an XML document wherein each node of the
tree is an index entry so that all the indexes are stored in a single row of a
relational database. This is similar to having a table on a page having a
plurality of index entries in a single row. We determine that it is reasonable
to conclude claim 1 at least recites a method that can be performed with pen
and paper. Further, merely using a generic computer (RDBMS) to
implement the tree does not render it patent eligible.
However, we also determine that Appellants reasonably assert that the
step of storing the index entries in a single row improves spatial locality, and
thereby speeds performance of the computer. We find conclusory the
Examiner’s determination that “[t]here is no indication that the combination
of elements improves the functioning of a computer or improves any other
technology.” The Memorandum references MPEP 2106.05(a) for
“information concerning improvements in the functioning of a computer or
to any other technology or technical field.” 84 Fed. Reg. 55, n.25. The
Examiner’s determination provides no analysis based on the MPEP
guidance; and we are unable to otherwise determine why claim 1 does not
integrate the recited judicial exception into a practical application that
improves the functioning of a computer or improves another technology.
We conclude that when evaluated under the Memorandum, the
Examiner has not demonstrated that claim 1 lacks an inventive concept. We
do not sustain the rejection of claim 1 under 35 U.S.C. § 101.
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F. Appellants’ § 103 Arguments8
In the Final Action, the Examiner rejects claim 1 under 35 U.S.C.
§ 103 as being unpatentable over Van Der Linden. The Examiner
determines “Van Der Linden teaches” (Final Act. 7):
storing the entire plurality of index entries in a single row
of a table in said database (see fig. 4 and paragraph [0024]:
examiner interprets node slot array 506 is single row of a table
which store plurality of entries 507).
Final Act. 8.
Appellants contend that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103 because:
Claim 1 recites “storing the entire plurality of index entries
in a relational table.” A skilled person would have known that a
relational table typically has relationships to other relational
table(s). [Appellants cite numerous U.S. and foreign patents to
show the meaning of relational database and relational table]
. . . Thus in the art, there are relationships between database
tables. Whereas, Van der Linden (FIG. 4) shows that node slot
array 506 has pointers (solid arrows) to nodes 508 and 508A-B.
Thus, instead of relationships between tables, Van der Linden
has pointers between a slot array and nodes, none of which is a
recited relational table. Thus the final Office action’s (page 8)
assertion, “Van Der Linden teaches a relationship between the
array and document. Hence it is obvious to call the array 506 is
relational table,” is irrelevant and/or inaccurate because a
relationship between an array and document nodes is not a
relationship between tables as known in the art. Absent a
relationship between tables, a skilled person would not consider
node slot array 506 as a relational table. Therefore, the final
Office action mischaracterizes node slot array 506 as a relational
table.

8 This contention is determinative as to the § 103 rejection of claim 1 (and
all other § 103 rejections). Therefore, we do not discuss Appellants’ other
contentions herein.
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App. Br. 8 (bracketed material added).
We find unhelpful Appellants’ citation to numerous U.S. and foreign
patents to show the art recognized meaning of key terms. Instead, we turn to
the Microsoft Press Computer Dictionary,9 which states the term “relational
database” means:
A type of database or data-base management system that stores
information in tables––rows and columns of data––and conducts
searches by using data in specified columns of one table to find
additional data in another table. In a relational database, the rows
of a table represent records (collections of information about
separate items) and the columns represent fields (particular
attributes of a record). In conducting searches, a relational
database matches information from a field in one table with
information in a corresponding field of another table to produce
a third table chat combines requested data from both tables.
We conclude, as to claim 1, after reviewing the Examiner’s rejection
and consistent with Appellants’ above argument (as modified by our use of
the Microsoft Dictionary), the Examiner is mistaken in finding a teaching of
“storing the entire plurality of index entries in a single row of a table in said
database” in the cited portion of Van der Linden. Thus, there is insufficient
articulated reasoning to support the Examiner’s findings that Van der Linden
discloses the argued limitation. Therefore, we conclude that there is
insufficient articulated reasoning to support the Examiner’s conclusion that
claim 1 is rendered obvious by Van Der Linden based on the Examiner’s
articulated reasoning.

9 Microsoft Press 1991.
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G. Appellants’ § 112(a) Arguments10
Appellants raise the following argument in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 112(a).
The final Office action (page 7) alleges of Claim 1,
“Applicant disclosure fails to disclose the limitation ‘storing the
entire plurality of index entries in a single row of a table in said
database’.” The specification (Overview) defines “a persistent
XML tree index for navigating the nodes of an XML document,
referred to interchangeably herein as the ‘navigation index’,
‘XML tree index’, or simply ‘index’.” The specification
(immediately above 0056) announces “STORAGE
INDEPENDENCE FOR XML TREE INDEX.” Thus, the
specification (0056-0057) teaches ways to store the index. The
specification (0057) teaches, “If the XML document is stored as
a CLOB in Database Table 610 or a BLOB in Database Table
620, the corresponding index may be stored in the document row
in a BLOB column of the same row.” A skilled person would
have recognized that the specification’s “the same row” means
“a single row” as recited by Claim 1. A skilled person also would
have recognized that the specification’s “corresponding index”
means “an XML tree index” as recited by Claim 1. The
specification (Background) teaches, “An entire XML document
may be stored as a large object (LOB) in a column of a database
table.” Thus, a skilled person would have understood that storage
of an entire object as a LOB is possible even for a compound
object, such as an entire XML document composed of XML
nodes. Likewise the specification (0057) teaches, “The
corresponding index may be stored … in a BLOB column.”
Thus, the skilled person would understand that the entire XML
document may be stored in a BLOB, and that the document’s
entire index may be stored in another BLOB, as shown in the
specification (FIG. 6). Thus, a skilled person would have
understood that storage of an index includes storage of all
entries of the index. Thus, Claim 1 is entitled to recite “the XML

10 This contention is determinative as to the § 112(a) rejection of claim 1.
Therefore, we do not discuss Appellants’ other contentions herein.
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tree index comprises a plurality of index entries ... ; storing the
entire plurality of index entries in a single row of a table in said
database.” Therefore, Claim 1 complies with the written
description requirement of 35 U.S.C. 112(a).
App. Br. 4–5 (Appellants’ emphasis omitted, Panel’s emphasis added).
In the Answer, the Examiner states:
There is no indication of plurality of index entries in the citation.
The recited phrase “corresponding index” [is] clearly [a] single
index not [a] plurality of indexes.
Ans. 5.
In the Reply Brief, the Appellants further argue:
A. Multiple index entries are taught.
Examiner’s Answer (page 5) alleges, “Applicant
disclosure clearly fails to disclose the limitation ‘storing the
entire plurality of index entries in a single row of a table in said
database’” and, “There is no indication of plurality of index
entries in the citation.” The specification announces, “FIG. 4B
is a diagram of example index entries for the example document
in FIG. 4A according to an embodiment of the invention” (0026),
“other index entries within the XML tree index” (0038), and
“index entries representing an XML tree index” (0045).
Therefore, the claimed “plurality of index entries” is well
supported.
B. Plurality of index entries is misconstrued.
Examiner’s Answer (page 5) alleges, “There is no
indication of plurality of index entries in the citation. The
recited phrase ‘corresponding index’ [is] clearly [a] single index
not [a] plurality of indexes.” Examiner seems to conflate
“plurality of indexes” with “plurality of index entries,” which are
contents of an index, because an index is necessarily a container
of entries. Entries are recited in Claim 1 as, “The XML tree index
comprises a plurality of index entries.”
Reply Br. 2.
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The Federal Circuit has explained that “[t]he test for the sufficiency of
the written description ‘is whether the disclosure of the application relied
upon reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.’” Vasudevan
Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 682 (quoting Ariad
Pharm., Inc. v. Eli Lilly and Co., 598F.3d 1336, 1351 (Fed. Cir. 2010) (en
banc)).
We are persuaded by Appellants arguments reproduced supra. The
Examiner has not presented a sufficient articulated reasoning as to why those
skilled in the art would conclude that the inventor did not have possession of
the claimed “plurality of index entries” as of the filing date.
We conclude there is insufficient articulated reasoning to support the
Examiner’s conclusion that claim 1 fails to comply with the written
description requirement.
CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 1–38 under 35 U.S.C. § 101 as being directed to patent-ineligible
subject matter.
(2) Appellants have established that the Examiner erred in rejecting
claims 1–38 as being unpatentable under 35 U.S.C. § 103.
(3) Appellants have established that the Examiner erred in rejecting
claims 1–38 as being unpatentable under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement.
(4) On this record, the Examiner has not shown claims 1–38 to be
unpatentable.
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DECISION
The Examiner’s rejection of claims 1–38 under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter is reversed.
The Examiner’s rejection of claims 1–38 as being unpatentable under
35 U.S.C. § 103 is reversed.
The Examiner’s rejection of claims 1–38 as being unpatentable under
35 U.S.C. § 112(a) is reversed.

REVERSED