Ex Parte Back et al

Patent Trial and Appeal Board

Nov 25, 2014

12568543 (P.T.A.B. Nov. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JONATHAN BACK and EMMANUEL A. PAPOUTSAKIS
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Appeal 2012-007660
Application 12/568,543
Technology Center 2100
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Before JASON V. MORGAN, DANIEL J. GALLIGAN, and
CHRISTA P. ZADO, Administrative Patent Judges.

ZADO, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

STATEMENT OF THE CASE
Appellants’ invention generally relates to serializable objects and a
serializable objects database. Spec. ¶ 26. Representative claim 1,
reproduced below, recites:

1 Appellants identify as the real party in interest Tellabs Communications
Canada, LTD (assignee identified as Tellabs Operations, Inc.). App. Br. 3.
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1. A method to communicate data between two objects
in a computing environment, comprising:
invoking a write method of a first object;
invoking a converter associated with a second object
having a second format for storing the data, the converter
configured to convert field values associated with first fields of
the first object to the second format; and
writing the converted field values to second fields of the
second object.

THE REJECTIONS
1. Claims 1–20 stand rejected under 35 U.S.C. § 102(a) and § 102(e)
as anticipated by Purdy et al. (hereinafter “Purdy”) (US 2006/0047679 A1;
published Mar. 2, 2006). Ans. 3, 7.
2. Claims 1 and 11 stand rejected under the judicially created doctrine
of obviousness-type double patenting as unpatentable over claims 1, 15, and
25 of U.S. Patent 7,761,485 (filed Oct. 25, 2006). Ans. 5–6.
3. Claims 1 and 11 stand rejected under the judicially created doctrine
of obviousness-type double patenting as unpatentable over claims 1 and 10
of U.S. Patent 7,620,526 (filed Oct. 25, 2006). Id.
4. Claims 1 and 11 stand rejected under the judicially created doctrine
of obviousness-type double patenting as unpatentable over claims 1 and 6 of
Co-pending Application No. 12/568,506.2 Id.
Rather than repeat all the arguments here, we refer to the Brief and the
Answer for the respective positions of Appellants and the Examiner. Only

2 The Examiner erroneously refers to Application No. 12/586,506 (which is
unrelated to the Application on appeal), instead of Application No.
12/568,506, which is related to the Application on appeal.
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those arguments actually made by Appellants have been considered in this
decision. Arguments that Appellants did not make in the Brief have not
been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).

ISSUES
Did the Examiner err in rejecting claims 1–20 under § 102 by finding
Purdy discloses “invoking a write method of a first object . . . invoking a
converter associated with a second object having a second format for storing
the data, the converter configured to convert field values associated with
first object fields of the first object to the second format”; and “invoking a
write method of a first object” and “writing the converted field values to the
second fields of the second object”?
Did the Examiner err in rejecting claims 1 and 11 under the judicially
created doctrine of obviousness-type double patenting by finding claims 1
and 11 unpatentable over claims 1, 15, and 25 of U.S. Patent 7,761,485?
Did the Examiner err in rejecting claims 1 and 11 under the judicially
created doctrine of obviousness-type double patenting by finding claims 1
and 11 unpatentable over claims 1 and 10 of U.S. Patent 7,620,526?
Did the Examiner err in rejecting claims 1 and 11 under the judicially
created doctrine of obviousness-type double patenting by finding claims 1
and 11 unpatentable over claims 1 and 6 of Co-pending Application
12/568,506?
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ANALYSIS
§ 102 Rejection
The Examiner reasonably finds Purdy discloses the following
elements recited in representative claim 1. As explained by the Examiner,
Purdy discloses “a first object,” i.e., data object; “invoking a converter
associated with a second object having a second format for storing the data,”
i.e., a formatter selects a converter corresponding to the appropriate
serialization format (i.e., second format); and, “the converter configured to
convert field values associated with first fields of the first object to the
second format,” i.e., the converter selected by the formatter serializes (i.e.,
converts) the extracted fields of the data object into the serialization format
(i.e., second format), and outputs the data. Ans. 8, 15. Purdy ¶ 35 (“data
object 231 is illustrated as including data fields 231A through 231C”). Id.
¶ 36 (a data contract is used to identify which data field types, and hence
which data fields, are to be extracted for serialization). Id. ¶ 41 (extracted
data fields are represented by abstract data 242). Id. ¶ 41 (“The formatter
202 then uses the appropriate converter component (e.g., converter
component 212A) to serialize the abstract data 242 into the appropriate
serialization format.”). The serialized data is depicted as output from the
serialization mechanism 200 in Fig. 2 of Purdy.
Appellants contend Purdy’s “individualized process based on one data
object corresponding to one serialization format” fails to disclose “invoking
a method of a first object . . . invoking a converter associated with a second
object having a second format for storing the data, the converter configured
to convert field values associated with first object fields of the first object to
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the second format” because “Purdy is only determining information about
the same data types in the same data object.” App. Br. 12.
Appellants’ contentions do not precisely distinguish Purdy from
claim 1. “[I]t is not the function of this Board to examine claims in greater
detail than argued by an appellant, looking for distinctions over the prior
art.” Ex Parte Shen, No. 2008-0418, 2008 WL 4105791 at *9 (BPAI Sept.
4, 2008) (non-precedential). As we discuss, supra, the Examiner reasonably
finds Purdy discloses “invoking a write method of a first object . . . invoking
a converter associated with a second object having a second format for
storing the data, the converter configured to convert field values associated
with first fields of the first object to the second format,” as recited in claim 1.
Appellants’ contentions provide a characterization of Purdy (i.e., “only
determining information about the same data types”), but do not provide a
persuasive explanation of how the Examiner has failed to show the
aforementioned elements of claim 1 are in Purdy.
As a result, we are not persuaded that the Examiner incorrectly
determined Purdy discloses “invoking a write method of a first object . . .
invoking a converter associated with a second object having a second format
for storing the data, the converter configured to convert field values
associated with first fields of the first object to the second format.”
Appellants also contend the Examiner improperly took Official Notice
with respect to “invoking a write method of a first object” and “writing the
converted field values to the second fields of the second object,” recited in
representative claim 1. App. Br. 12–13. In particular, Appellants contend
the Examiner over-broadly defines serialization as follows: “it is further
noted that reading and writing objects is a process called serialization,
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therefore, read and write is integral part [sic] of Purdy’s teaching.” Id. at 12
(emphasis and internal quotation marks omitted). Appellants’ reasoning is
that “such a broad interpretation of the term ‘serialization’ as used in Purdy
is inappropriate to take Official Notice of Appellant’s aforementioned claims
elements . . . because Purdy’s serialization does require ‘writing the
converted field,’ as recited in Appellant’s [sic] Claim 1.” Id.
The Examiner does not actually state Official Notice was taken to
show “invoking a write method of a first object” and “writing the converted
field values to the second fields of the second object.” App. Br. 12; see also
Fin. Act. 8; Ans. 8–9, 15. Moreover, with regard to the aforementioned
claim elements, the Examiner does not merely rely on the “broad
interpretation of the term ‘serialization’” called out by Appellants. Fin.
Act. 8; Ans. 8–9, 15. The Examiner further explains Purdy discloses
serializing objects, such as Java objects, and that write methods are integral
functions of objects. Ans. 15, citing Purdy ¶¶ 5, 7. Paragraph 6 of Purdy
provides further disclosure that write methods may be part of object
serialization, providing that “[i]n order to write or transmit a data object, the
in-memory representation of the data object is serialized . . . .” Purdy ¶ 6.
The Examiner also explains the serialization interface in Purdy is used to
serialize objects to and from the extensible markup language (XML) format,
which exposes the objects to write methods (Fin. Act. 8; Ans. 9), which is
what the Specification discloses in a preferred embodiment (Spec. ¶ 52) (“In
one embodiment, if [converter] CV 540 is an XML converter (e.g., XML
CV 470), then fields 505 are converted into attributes of an XML object/file
640.”). The additional findings and evidence provided by the Examiner are
reasonable, and support the Examiner’s ultimate conclusion of obviousness.
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As a result, we are not persuaded that the Examiner incorrectly
determined Purdy discloses “invoking a write method of a first object” and
“writing the converted field values to the second fields of the second object.”
We therefore sustain the Examiner’s rejection of (1) independent
claim 1; (2) independent claim 11, which recites commensurate limitations
and is not argued separately; and (3) dependent claims 2–10 and 12–20,
which are not argued separately.

Obviousness-Type Double Patenting
Appellants state they will consider filing a terminal disclaimer to
overcome the double patenting rejections of claims 1 and 11 if the rejections
under § 1013 and § 102 are withdrawn, but Appellants do not otherwise
address the double-patenting rejections, and do not provide argument
regarding either the merits or substance of the double patenting rejections.
App. Br. 16–17.
With regard to the Examiner’s double patenting rejections over claims
1, 15, and 25 of issued U.S. Patent 7,761,485, and separately over claims 1
and 10 of issued U.S. Patent 7,620,526, in light of the tentative nature of
Appellants’ offer to file a terminal disclaimer, and lack of argument by
Appellants regarding the merits and substance of the double-patenting
rejections, we summarily sustain the Examiner’s rejections for obviousness-
type double patenting. See MPEP § 1205.02 (2008) (“If a ground of
rejection stated by the examiner is not addressed in the appellant’s brief, that
ground of rejection will be summarily sustained by the Board.”); see also
Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“If an

3 The Examiner has withdrawn the rejections under § 101. Ans. 4.
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appellant fails to present arguments on a particular issue—or more broadly,
on a particular rejection—the Board will not, as a general matter, unilaterally
review those uncontested aspects of the rejection.”).
As to the Examiner’s double patenting rejection in view of
Application No. 12/568,506, the issue is moot because the application is no
longer pending. See Notice of Abandonment (Jan. 22, 2013). Accordingly,
we decline to reach a decision.
We, therefore, sustain the Examiner’s decision rejecting claims 1 and
11 for obviousness-type double patenting over claims 1, 15, and 25 of issued
U.S. Patent 7,761,485, and separately over claims 1 and 10 of issued U.S.
Patent 7,620,526.

DECISION
The Examiner’s decision rejecting claims 1–20 under § 102 is
AFFIRMED.
The Examiner’s decision rejecting claims 1 and 11 for obviousness-
type double patenting is AFFIRMED.

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).

AFFIRMED

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