10904055 (B.P.A.I. Sep. 29, 2010)

Ex Parte Chinchwadkar et al

Board of Patent Appeals and InterferencesSep 29, 2010

10904055 (B.P.A.I. Sep. 29, 2010)

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. 10/904,055 10/21/2004 Gajanan S. Chinchwadkar SYB/0116.00 1055 31779 7590 09/29/2010 JOHN A. SMART 201 LOS GATOS SARATOGA RD, #161 LOS GATOS, CA 95030-5308 EXAMINER NG, AMY ART UNIT PAPER NUMBER 2166 MAIL DATE DELIVERY MODE 09/29/2010 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte GAJANAN S. CHINCHWADKAR, ANUPAM SINGH, SRIKANTH SAMPATH, and PHIL SHAW ____________________ Appeal 2009-004237 Application 10/904,055 Technology Center 2100 ____________________ Before HOWARD B. BLANKENSHIP, JEAN R. HOMERE, and CAROLYN D. THOMAS, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-004237 Application 10/904,055 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-90. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. According to Appellants, the invention relates to a database system for providing a methodology for execution of functions, in queries, that request data from markup language documents (Spec. 2, [Para. 5]). Claim 1 is illustrative: 1. A method for executing a function in a path-based query requesting data from a markup language document stored in a database, the markup language document organized hierarchically into nodes, the method comprising: receiving the path-based query requesting data from the markup language document, the path-based query including a built-in function that operates within a particular context of the markup language document during execution of the path-based query; determining nodes of the markup language document satisfying the path-based query; deriving values of said nodes of the markup language document; and executing the built-in function with said derived values and said nodes of the markup language document. Appeal 2009-004237 Application 10/904,055 3 Rejections The Examiner in the Answer set forth the following new grounds of rejection: R1: Claims 29-59 and 79 stand rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. R2: Claim 79 stands rejected under 35 U.S.C. § 112, second paragraph as being indefinite. The Examiner in the Final Rejection and the Answer set forth the following grounds of rejection: R3: Claims 1-6, 13-17, 22-28, 60-65, 69, and 77-80 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Manikutty (U.S. 7,120,645 B2, Oct. 10, 2006). R4: Claims 7-12, 29-35, 39-49, 52-59, 70-76, 81, 82, and 86-90 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Manikutty and Thusoo (U.S. 2005/0228768 A1, Oct. 13, 2005). R5: Claims 18-21 and 66-68 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Manikutty and Eglisson (U.S. 7,016,910 B2, Mar. 21, 2006). R6: Claims 36-38, 50, 51, and 83-85 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Manikutty, Thusoo, and Eglisson. Appeal 2009-004237 Application 10/904,055 4 GROUPING OF CLAIMS Appellants argue claims 1-6, 13-17, 22-28, 60-65, 69, 77, 78, and 80 as a group (see App. Br. 7-12). Appellants argue claims 7-12, 70-76, 81, 82, and 86-90, on the basis of arguments made with respect to claim 1 (see App. Br. 12-13). Appellants argue claims 18-21 and 66-68, on the basis of arguments made with respect to claim 1 (see App. Br. 13-14). Appellants argue claims 83-85 on the basis of arguments made with respect to claim 1 (see App. Br. 14). We, therefore, select claim 1 as the representative claim. Thus, claims 2-28, 60-78, and 80-90 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii). FINDINGS OF FACT (FF) Manikutty Reference Manikutty discloses that: Embodiments are described … in the context of a commercial extensible markup language/structured query language (XML/SQL) database server, which uses object-relational constructs for storage of content for one or more XML constructs, and which responds to XPath queries for that content to be output as one or more XML constructs. XPath queries involve an XPath expression to locate data in an XML construct and zero or more XPath based functions to produce, combine or compare data located by an XPath expression. XPath standard functions include EXTRACT, EXTRACTVALUE, [and] NODESEXIST. . . . However, the invention is not limited to this context, but may be applied in any context involving relational database constructs and XML data. (Col. 5, l. 63 - col. 6, l. 9.) Appeal 2009-004237 Application 10/904,055 5 PRINCIPLES OF LAW Anticipation In rejecting claims under 35 U.S.C. § 102, “[a] single prior art reference that discloses, either expressly or inherently, each limitation of a claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citing Minn. Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed. Cir. 1992)). ANALYSIS Dismissal of Appeal as to Claims 29-59 and 79 The Examiner entered new grounds of rejection in the Examiner's Answer against (1) claims 29-59 and 79 under § 101 as being directed to non-statutory subject matter (Ans. 3) and (2) claim 79 under 35 U.S.C. § 112, second paragraph as being indefinite (Ans. 4). The Technology Center Director approved the new grounds of rejection (Ans. 44). As the Answer indicates, Appellants were required to respond to the new ground of rejection within two months in either of two ways: (1) reopen prosecution or (2) maintain the appeal by filing a reply brief, to avoid sua sponte dismissal of the appeal as to the claims subject to the new grounds of rejection (Ans. 43)(see also 37 C.F.R. § 41. 39(b)). According to the record before us, Appellants did not exercise either option. Therefore, we sua sponte dismiss the appeal as to the claims subject to the new grounds of rejection under § 101 and § 112, namely, claims 29-59 and 79. Appeal 2009-004237 Application 10/904,055 6 Claims 1-28, 60-78, and 80-90 Issue: Did the Examiner err in finding the prior art teaches a “path- based query including a built-in function,” as recited in claim 1? Appellants argue “Manikutty’s disclosure is directed to functions for SQL/XML queries, not functions for XPath (path-based expression) queries, which are the subject of Appellants[’] invention and claims” (App. Br. 8). Further, Appellants argue the two are different and are not interchangeable (see App. Br. 8). The Examiner finds that Manikutty discloses “XPATH queries … and XPATH standard functions such as EXTRACT, EXTRACTVALUE, and NODEEXIST” (Ans. 40). The Examiner also finds that Manikutty’s “XPATH standard functions are used to operate on the particular context of the XML document” (Ans. 40). We agree with the Examiner. Manikutty discloses both “XPath queries” and “XPath functions.” For example, Manikutty discloses that embodiments of their inventions are described in the context of an XML/SQL database server that responds to XPath queries (FF). Further, Manikutty discloses that XPath queries include functions, as XPath queries involve (1) an XPath expression to locate data in an XML construct and (2) zero or more XPath based functions (e.g., EXTRACT, EXTRACTVALUE, [and] NODESEXIST ) to produce, combine or compare data located by an XPath expression (FF). Thus, we find that Manikutty discloses path-based queries (i.e., XPath queries) including built-in functions, e.g., EXTRACT and EXTRACTVALUE, that operate within a XML document. Appeal 2009-004237 Application 10/904,055 7 Therefore, we find that the Examiner did not err in finding that Manikutty teaches a “path-based query including a built-in function,” as set forth in representative claim 1. Accordingly, we affirm the Examiner’s § 102 rejection of claim 1, and claims 2-6, 13-17, 22-28, 60-65, 69, 77, 78, and 80 which fall therewith. As for the § 103(a) rejections, Appellants rely on the same arguments made with respect to representative claim 1 noted supra, which we have already found unpersuasive. Therefore, we likewise affirm the Examiner’s § 103(a) rejection of claims 2-28, 60-78, and 80-90. DECISION We sua sponte dismiss the appeal as to claims 29-59 and 79. The Examiner’s rejection of claims 1-6, 13-17, 22-28, 60-65, 69, 77, 78, and 80 under 35 U.S.C. § 102(e), as being anticipated by Manikutty, is affirmed. The Examiner’s rejection of claims 7-12, 70-76, 81, 82, and 86-90 under 35 U.S.C. § 103(a), as being unpatentable over Manikutty and Thusoo, is affirmed. The Examiner’s rejection of claims 18-21 and 66-68 under 35 U.S.C. § 103(a), as being unpatentable over Manikutty and Eglisson, is affirmed. The Examiner’s rejection of claims 83-85 under 35 U.S.C. § 103(a), as being unpatentable over Manikutty, Thusoo, and Eglisson, is affirmed. Appeal 2009-004237 Application 10/904,055 8 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) (2009). AFFIRMED rwk JOHN A. SMART 201 LOS GATOS SARATOGA RD, #161 LOS GATOS, CA 95030-5308