Ex Parte Dejean et al

Board of Patent Appeals and Interferences

May 8, 2012

11116100 (B.P.A.I. May. 8, 2012)

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.
11/116,100 04/27/2005 Herve Dejean 20040970USNP-XER00925US01 2877
27885 7590 05/08/2012
FAY SHARPE LLP
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115
EXAMINER
HUTTON JR, WILLIAM D
ART UNIT PAPER NUMBER
2176
MAIL DATE DELIVERY MODE
05/08/2012 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 HERVE DEJEAN and JEAN-LUC MEUNIER
____________

Appeal 2010-003296
Application 11/116,100
Technology Center 2100
____________

Before THOMAS S. HAHN, BRADLEY W. BAUMEISTER, and
JOHN A. EVANS, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003296
Application 11/116,100

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SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejections of claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b).
1) Claims 1, 2, 7, 13, 14, and 17-19 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Hsu (US 2002/0083096 A1; June 27, 2002) in
view of Namba (US 2003/0018629 A1; Jan. 23, 2003);
2) Claims 3, 4, and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hsu in view of Namba and further in view of Heckerman
(US 2004/0181554 A1; Sep. 16, 2004); and
3) Claims 5, 6, 8-12, and 16 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Hsu in view of Namba and further in view of
Alleshouse (US 2007/0125859 A1; June 7, 2007).1 We reverse.
Pursuant to our authority under 37 C.F.R. § 41.50(b) we enter a new
ground of rejection. We reject claim 1 under 35 U.S.C. § 101 as being
directed to patentable-ineligible subject matter.

STATEMENT OF THE CASE
Background
Appellants’ invention relates to the information storage and
processing arts. It finds particular application in conjunction with converting
and cataloging legacy documents in a marked-up format such as extensible
markup language (XML), standard generalized markup language (SGML),
hypertext markup language (HTML), or similar. (Spec. ¶ [0002]).2 Legacy

1 Effective filing dates for the cited evidence relied on by the Examiner are
not at issue.
2 Rather than repeat Appellants’ arguments or the Examiner’s positions in
their entirety, throughout this opinion we refer to the following documents
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document conversion relates to converting unstructured documents existing
in formats such as Adobe portable document format (pdf), various text
formats, and various word processing formats into structured documents
employing a markup language such as XML, SGML, or HTML. In
structured documents, content is organized into delineated structural nodes
each containing a section of text, figures, tables, or so forth. The lowest
level, or leaves, of the structure typically corresponds to sentences, text
blocks, or the like, while higher levels delineate nested, tree-like, or
otherwise-organized groupings of nodes. Document structure typically is
implemented using markup tags interspersed through the document. In some
structured document formats such as XML, a document type definition
(DTD) or similar dedicated document portion provides structural
information about the document. (Spec. ¶¶ 0002-3).
The Claimed Invention
Claim 1 is illustrative of the claimed subject matter:
1. A method for structuring a document organized as a
plurality of nodes associated with a table of contents, the
method comprising:
clustering the nodes into a plurality of clusters based on a
similarity criterion, the clustering producing flat clusters that
are not arranged hierarchically;
identifying one of the clusters as corresponding to a
highest or lowest level of the table of contents based on a
selection criterion;

for their respective details: (1) the Appeal Brief (“App. Br.”) filed
September 14, 2009, (2) the Examiner’s Answer (“Ans.”) mailed October
15, 2009, (3) the Reply Brief (“Reply Br.”) filed December 15, 2009, (4) the
Specification (“Spec.”) filed April 27, 2005, and (5) the Final Rejection
(“F.R.”) mailed April 13, 2009.
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Application 11/116,100

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assigning the highest or lowest level to the nodes
belonging to the identified cluster;
repeating the identifying and assigning to assign levels to
the nodes belonging to each next highest or lowest level of the
table of contents, the repeated identifying being based on the
selection criteria applied disregarding nodes that have already
been assigned a level; and
structuring the document based at least in part on the
levels assigned to the table of contents nodes.

CONTENTIONS
The Examiner finds that Hsu discloses every limitation of independent
claim 1 except that Hsu fails to teach flat clustering. (Ans. 4-5). That is, the
Examiner acknowledges that Hsu’s nodes are arranged hierarchically. (Id.).
The Examiner additionally finds that “Namba teaches clustering into non-
hierarchical clusters based on similarity criterion which meets the limitation,
the clustering producing flat clusters that are not arranged hierarchically.
Namba also teaches clustering based on a similarity criterion.” (Id.).
The Examiner concludes that
[i]t would have been obvious to a person of ordinary skill
in the art at the time of the invention to substitute one method
of clustering (i.e. flat clustering taught by Namba) for the other
(i.e. hierarchical clustering taught by Hsu) to achieve the
predictable result of flat clustering because one of ordinary skill
in the art would have been able to carry out such a substitution,
and the results were reasonably predictable. In other words, a
person of ordinary skill in the art would have been able to
substitute Hsu’s hierarchical clusters with Namba’s flat clusters
and create a hierarchy of nodes.
(Ans. 5-6).
Appellants dispute that Hsu teaches the clustering of nodes at all.
(App. Br. 10). They additionally contend that even assuming arguendo the
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Examiner is correct in concluding Hsu teaches hierarchical clustering, the
Examiner’s “simple substitution” of Namba for Hsu would still be improper.
(App. Br. 18). One reason is that “it is the hierarchical clustering of Hsu that
generates the hierarchy of nodes. If one replaces the (alleged) hierarchical
clustering of Hsu with flat clustering, one gets flat clusters. How does one
then go from the flat clusters to hierarchical clusters?” (Reply Br. 12).

ISSUE
Has the Examiner established that replacing a hierarchical clustering
method with a flat clustering method will produce a document node
structuring method that entails two distinct claim steps of (1) first producing
flat clusters and (2) subsequently assigning these clusters various
hierarchies?

ANALYSIS
Appellants’ arguments are pursuasive. Merely substituting the flat
clustering of Namba for the hierarchical clustering of Hsu would produce
flat clusters and, thus, render Hsu inoperable. “[I]f [a] proposed modification
would render the prior art invention being modified unsatisfactory for its
intended purpose, then there is no suggestion or motivation to make the
proposed modification.” (MPEP 2143.01 (citing In re Gordon, 733 F.2d 900
(Fed. Cir. 1984))). Moreover, the Answer does not set forth how
replacing a hierarchical clustering method with a flat clustering method will
produce a document node structuring method that entails two distinct claim
steps of (1) first producing flat clusters and (2) subsequently assigning these
clusters various hierarchies.
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In view of the foregoing, we find that the Examiner has not made out
a prima facie case of obviousness under 35 U.S.C. § 103. We therefore do
not sustain the obviousness rejection of independent claim 1, or of claims 2
and 7, which depend from claim 1. Independent claim 13 recites limitations
that are similar to those of claim 1. For the reasons set forth in relation to
claim 1, then, we likewise do not sustain the obviousness rejection of claim
13, or of claims 14, and 17-19, which depend from claim 13.
With respect to the remaining rejections of claims 3-6, 8-12, 15, and
16, neither Heckerman nor Alleshouse cures the deficiency of the
obviousness rejection explained above.

NEW GROUNDS OF REJECTION UNDER 37 C.F.R. § 41.50(b)
Pursuant to our authority under 37 C.F.R. § 41.50(b) we reject
independent claim 1 under 35 U.S.C. § 101 as being directed to patent
ineligible subject matter.
Section 101 of the Patent Act defines patentable subject matter:
“Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.” 35 U.S.C. § 101. The Supreme Court has long
held that this provision contains an important implicit exception. “‘[L]aws of
nature, natural phenomena, and abstract ideas’ are not patentable.” (Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S.Ct. 1289, 1290 (2012)
(citation omitted).
Claim 1 recites method steps including clustering nodes, identifying
clusters, iteratively assigning a level to a node, and structuring a document.
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Each of these method steps purport to somehow modify the node, but the
claim does not require that the node, or these modifications to it, be tied to a
particular machine. Nor does claim 1 require these modifications transform a
particular physical article to a different state or thing.
Rather, in view of Appellants’ Specification, we understand the claim
term “node” to refer to mental designations of attributes that are associated
with the inferentially recited document. For example, the Specification states
“[i]n structured documents, content is organized into delineated structural
nodes each containing a section of text, figures, tables, or so forth.” (Spec.
1). Where a logical organization of the underlying document may be
specified, “[a] document type definition (DTD) … provides structural
information about the document.” (Spec. 1).
Furthermore, each step of claim 1 is broad enough to read on a mental
organization of these subjectively designated attributes. That is, claim 1
recites abstract thought-processes that may be performed either entirely in
the head of an artisan or with paper and pencil. Furthermore, we are unable
to identify any factors in this record weighing toward patent eligibility.3
For the foregoing reasons, we conclude that claim 1 is directed to
patent-ineligible subject matter under 35 U.S.C. § 101. Although we decline
to reject every claim under our discretionary authority under 37 C.F.R.
41.50(b), we emphasize that our decision does not mean the remaining
claims are patentable. Rather, we merely leave the patentability
determination of these claims to the Examiner. See MPEP § 1213.02.

3 See USPTO Interim Guidance for Determining Subject Matter Eligibility
for Process Claims in View of Bilski v. Kappos, 75 Fed. Reg. 43922, Jul. 27,
2010.

Appeal 2010-003296
Application 11/116,100

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DECISION
The Examiner’s decision rejecting claims 1-19 under 35 U.S.C. § 103
is reversed.
Pursuant to 37 C.F.R. § 41.50(b), we reject claim 1 under 35 U.S.C.
§ 101 as being directed to patentable-ineligible subject matter.
Rule 37 C.F.R. § 41.50(b) states that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Furthermore, 37 C.F.R. § 41.50(b) also provides that Appellants, 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 the appeal 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 § 41.52 by the Board upon the same record. . . .

REVERSED
37 C.F.R. § 41.50(b)

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