Ex Parte Dirstine

Patent Trial and Appeal Board

Nov 21, 2013

10710835 (P.T.A.B. Nov. 21, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ADAM D. DIRSTINE1
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Appeal 2011-012760
Application 10/710,835
Technology Center 2100
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Before TONI R. SCHEINER, ULRIKE W. JENKS, and TINA E. HULSE,
Administrative Patent Judges.

HULSE, Administrative Patent Judge

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims related to
compressing extensible markup language (XML) documents. The Examiner
has provisionally rejected certain claims on the ground of nonstatutory
obviousness-type double patenting. The Examiner has also rejected the
claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 Appellant identifies the Real Party in Interest as Digi International, Inc.
(App. Br. 2.)
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STATEMENT OF THE CASE
Claims 16, 17, 19-26, and 31-38 are on appeal. (App. Br. 4.)
Claim 16 is representative and reproduced below:
16. A network device comprising:
at least one processor;
a network interface configured to communicate with the
at least one processor and a network; and
an XML document processing module, including a
compression module configured to:
compress an XML document into a compressed binary
stream,
convert the compressed binary stream into compressed
ASCII text encoded from the compressed binary stream, and
format the compressed ASCII text so as to form a
compressed valid XML document, including replacing any
invalid XML characters with standard XML replacement text,
and wherein compressing an XML document into a compressed
binary stream includes compressing redundant text streams in
the XML document.

The claims stand rejected as follows:
 Claims 16, 17, 19-25, 31-32, 34, and 36-38 are provisionally
rejected on the grounds of nonstatutory obviousness-type
double patenting as being unpatentable over copending U.S.
Patent Application No. 11/980,901 (“the ’901 application”) in
view of Cseri,2 or the ’901 application in view of Cseri and in
further view of one of Gordy,3 Ma,4 and Hsu5 (Ans. 6-10);

2 Cseri et al., US 2003/0046317 A1, published March 6, 2003.
3 Gordy et al., US 2005/0129033 A1, published June 16, 2005.
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 Claims 16, 20, 23-25, 31, 33, and 35 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Cseri, in view of
Reeves6 and DeBettencourt7 (id. at 10-16);
 Claim 17 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cseri, Reeves, and DeBettencourt as applied
to claim 16 above, and further in view of Girardot8 (id. at 16-
17);
 Claim 19 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cseri, Reeves, and DeBettencourt as applied
to claim 16 above, and further in view of Tycksen, Jr.9 (id. at
17);
 Claims 21, 22, 32, and 34 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Cseri, Reeves, and DeBettencourt as
applied to claims 16 and 31 above, and further in view of Gordy
(id. at 18-20);
 Claims 22 and 34 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Cseri, Reeves, and DeBettencourt as
applied to claims 16 and 31 above, and further in view of Ma
(id. at 20-21);
 Claim 26 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cseri, Reeves, and DeBettencourt as applied

4 Ma et al., US 2005/0063575 A1, published March 24, 2005.
5 Hsu et al., US 2004/0205158 A1, published October 14, 2004.
6 Reeves, Jr., US 7,178,163, issued February 13, 2007.
7 DeBettencourt et al., US 2005/0060372 A1, published March 17, 2005.
8 Girardot et al, US 2003/0023628 A1, published January 30, 2003.
9 Tycksen, Jr., et al., US 6,189,097, issued February 13, 2001.
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to claims 16 and 31 above, and further in view of Hsu (id. at
21);
 Claims 36-38 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cseri, Reeves, and DeBettencourt as applied
to claim 16 above, and further in view of Krasinski10 (id. at 21-
23).
DISCUSSION
The claimed invention relates to compressing XML documents into
valid XML documents. The Examiner provisionally rejected most of the
pending claims for obviousness-type double patenting over a divisional
application of the present Application. The Appellant has indicated that a
Terminal Disclaimer has been filed in the divisional application in response
to a provisional obviousness-type double patenting rejection over the present
Application. Thus, the first issue to consider is whether a terminal
disclaimer filed in a divisional application renders moot the obviousness-
type double patenting rejection of the claims in the present Application.
The Examiner also rejected each of the claims as obvious over Cseri,
Reeves, and at least one other reference. The second issue presented is
whether a preponderance of the evidence supports the Examiner’s
conclusion that the claims are obvious.

Findings of Fact (FF)
1. The Examiner provisionally rejected claims 16, 17, 19-25, 31-
32, 34, and 36-38 as being unpatentable for nonstatutory obviousness-type

10 Krasinski, US 6,850,948, issued February 1, 2005.
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double patenting over claims 1-6 and 15 of the copending ’901 application
and at least one other cited reference. (Ans. 6-10.)
2. The ’901 application is a divisional application of the present
Application.
3. Appellant stated that, in a Final Office Action dated May 25,
2011, the Examiner of the ’901 application provisionally rejected the claims
of the ’901 application on the ground of nonstatutory obviousness-type
double patenting in view of the present Application. Appellant noted that a
Terminal Disclaimer was filed on July 19, 2011, along with the Response to
the Final Office Action. (Reply Br. 5.)
4. The Terminal Disclaimer filed in the ’901 application explicitly
referenced the present Application and was approved on August 10, 2011.
5. The Examiner rejected each of the pending claims as obvious
over Cseri, Reeves, and at least one other prior art reference. (Ans. 10-23.)
6. Cseri, entitled “Method and System for Providing an XML
Binary Format,” relates to incorporating binary formatting into XML to
“minimize[] parsing time and the generation of overhead incident to the
formatting and parsing of data.” (Cseri, Abstract.)
7. Reeves, entitled “Cross Platform Network Authentication and
Authorization Model,” relates to “network security via authentication and
authorization.” (Reeves, col. 1, ll. 7-9.)
8. In rejecting the claims as obvious, the Examiner found that
“Cseri does not teaches [sic] convert[ing] the compressed binary stream into
compressed ASCII text encoded from the compressed binary stream, and
formatting the compressed ASCII text so as to form a compressed valid
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XML document, including replacing any invalid XML characters with
standard XML replacement text.” (Ans. 11.)
9. The Examiner found that Reeves teaches “converting a binary
stream into ASCII text encoded from the binary stream,” and “formatting the
ASCII text so as to form an XML.” (Id. at 11-12.)
10. The Examiner also found that the claimed “‘compressed binary
stream’ is just a binary stream, since the ‘binary’ stream is a
compressed/reduced size stream that is claimed as ‘compressed binary’.
Therefore, Reeve’s [sic, Reeves’s] binary stream resulting from
serializing/converting ticket object, is a ‘compressed binary stream’ in the
claimed language of claims 1 and 31.” (Id. at 25.)
11. Reeves teaches that a “byte stream is then cryptographically
encoded to secure it’s [sic] contents from improper use, as represented by
block 318.” (Reeves, col. 8, ll. 36-38.)
12. Reeves then discloses that “[b]lock 320 UUEncodes this
stream, that is, transforms this encrypted, binary byte stream into a text
stream appropriate for transmission as part of an XML message over the
HTTP protocol.” (Id. at col. 8, ll. 39-42.)
13. The Examiner stated:
It would have been obvious to a person of ordinary skill
in the art at the time the invention was made to have combined
Reeves’s teaching and Cseri’s teaching to convert Cseri’s
compressed binary stream to compressed ASCII text and format
the compressed ASCII text to form a compress XML
message/document, since the combination would have
transformed the binary into text stream appropriate for
transmission a [sic, as] part of an XML message over the HTTP
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protocol, as well as using the such XML message as Reeves
disclosed in col.8, lines 38- 43 and col.9, lines 1-33.
(Ans. 12.)
14. The Examiner also stated:
[T]he XML document is converted and formatted into a
compressed/reduced valid XML document that is applicable for
transmitting over HTTP using SOAP protocol. Therefore, the
combination of Cseri, Reeves and De[B]ettencourt would have
still speeded up the transmission of the XML document, when
the XML document is converted to compressed/reduced XML
document as well as transmitted the XML document over
HTTP using any protocol(s), including SOAP protocol that
requires appropriated text stream as Reeves suggested (Reeves,
col.8, lines 39-42, “transfomrs [sic] this encrypted, binary byte
stream into a text stream appropriate for transmission as part of
an XML message over the HTTP protocol), when the XML
document is converted and formatted into compressed valid
XML document. Since these benefits/advantages are suggested
from Cseri and Reeves, the rejection is proper.
(Id. at 30.)

Analysis
Obviousness-Type Double Patenting
The Examiner provisionally rejected claims 16, 17, 19-25, 31-32, 34,
and 36-38 for obviousness-type double patenting over claims 1-6 and 15 of
the copending ’901 application and at least one other reference. (FF 1.) The
’901 application is a divisional application of the present Application.
(FF 2.) During prosecution of the ’901 application, the Examiner
provisionally rejected the claims over the present Application. (FF 3.) The
Appellant filed a Terminal Disclaimer in the ’901 application on July 19,
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2011. (Id.) The Terminal Disclaimer filed in the ’901 application explicitly
references the present Application and has been approved. (FF 4.)
Because Appellant has filed a Terminal Disclaimer in the ’901
application, the obviousness-type double patenting rejection in the present
Application is now moot. Cf. MPEP § 804(I)(B)(1) (instructing examiners
that if provisional obviousness-type double patenting rejections in two
applications are the only remaining rejections in those applications, the
examiner should withdraw the rejection in the earlier filed application and
require a terminal disclaimer in the later-filed application). We therefore do
not reach the merits of the Examiner’s provisional rejections. See Ex parte
Moncla, 95 USPQ2d 1884, 1885 (BPAI 2010) (precedential) (finding, on
remand from the Federal Circuit, that it was premature for the prior panel to
address the provisional obviousness-type double patenting rejection over a
later-filed, copending application).

Rejections Under 35 U.S.C. § 103
There are seven obviousness rejections of the claims, but each relies,
in relevant part, on the Examiner’s proposed combination of the teachings of
Cseri and Reeeves, so we will discuss the rejections together. The Examiner
found that Cseri does not teach “convert[ing] the compressed binary stream
into compressed ASCII text encoded from the compressed binary stream,
and formatting the compressed ASCII text so as to form a compressed valid
XML document.” (FF 8.) The Examiner then found that Reeves teaches
“converting a binary stream into ASCII text encoded from the binary
stream,” and “formatting the ASCII text so as to form an XML.” (FF 9.)
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Reeves relates to “network security via authentication and
authorization.” (FF 7.) Accordingly, Reeves teaches cryptographically
encoding a byte stream and then converting it into a text stream appropriate
for transmission as part of an XML message. (FF 11-12.) The Examiner,
however, has not shown that Reeves teaches any sort of compression. Thus,
while the Examiner may have been correct that Reeves teaches “converting a
binary stream into ASCII text encoded from the binary stream,” and then
“formatting the ASCII text so as to form an XML,” that is not what the
claims require. The claims require “convert[ing] the compressed binary
stream into compressed ASCII text encoded from the compressed binary
stream, and format[ting] the compressed ASCII text so as to form a
compressed valid XML document.” (See, e.g., App. Br. 26 (claim 16))
(emphasis added).
To satisfy the prima facie burden of establishing obviousness, the
Examiner must provide an apparent reason to combine the teachings of Cseri
with Reeves to reach the claimed invention. KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007) (“[I]nterrelated teachings of multiple patents; the
effects of demands known to the design community or present in the
marketplace; and the background knowledge possessed by a person having
ordinary skill in the art, all [should be considered] in order to determine
whether there was an apparent reason to combine the known elements in the
fashion claimed.”). The Examiner offered two reasons. First, the Examiner
stated that it would have been obvious to combine Reeves and Cseri “since
the combination would have transformed the binary into text stream
appropriate for transmission [as] part of an XML message over the HTTP
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protocol, as well as using the such XML message as Reeves disclosed in
col.8, lines 38-43 and col.9, lines 1-33.” (FF 13.) Second, the Examiner
found that the combination would have “still speeded up the transmission of
the XML document, when the XML document is converted to
compressed/reduced XML document as well as transmitted the XML
document over HTTP using any protocol(s), including SOAP protocol that
requires appropriated [sic] text stream as Reeves suggested . . . when the
XML document is converted and formatted into compressed valid XML
document.” (FF 14.)
We find the Examiner’s reasons unpersuasive. The Examiner does
little more than state that it would have been obvious to combine Cseri and
Reeves because, by doing so, one would obtain the benefits of the claimed
invention. That is insufficient. As the Federal Circuit has explained, “Care
must be taken to avoid hindsight reconstruction by using ‘the patent in suit
as a guide through the maze of prior art references, combining the right
references in the right way so as to achieve the result of the claims in suit.’”
In re NTP, Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011) (quoting Grain
Processing Corp. v. Am.-Maize Prods. Co., 840 F.2d 902, 907 (Fed. Cir.
1988)). Accordingly, we find the Examiner erred in finding a person of
ordinary skill in the art would have had a reason to combine Cseri and
Reeves and in concluding that the claims are obvious in view of those
references.
Moreover, the Examiner appears to read the term “compressed” out of
the claims. For example, the Examiner stated that the claimed “‘compressed
binary stream’ is just a binary stream, since the ‘binary’ stream is a
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compressed/reduced size stream that is claimed as ‘compressed binary’.”
(FF 10.) Based on that interpretation, the Examiner concluded that “Reeve’s
[sic] binary stream resulting from serializing/converting ticket object, is a
‘compressed binary stream’ in the claimed language of claims 1 and 31.”
(Id.) While claims are to be given their broadest reasonable interpretation
during examination, “[a]ll words in a claim must be considered in judging
the patentability of that claim against the prior art.” In re Wilson, 424 F.2d
1382, 1385 (CCPA 1970). Thus, the Examiner erred in construing
“compressed binary stream” as just any binary stream and in finding that
Reeves’s binary stream (without compression) is a “compressed binary
stream” according to the claims.

Conclusions of Law
Because the Appellant has filed a Terminal Disclaimer in the
copending divisional application, the provisional obviousness-type double
patenting rejection of the claims in the present Application is moot.
The preponderance of the evidence does not support the Examiner’s
conclusion that the claims are obvious over Cseri, Reeves, and the other
cited references. Accordingly, we reverse the rejections of claims 16 and 31
as obvious over Cseri, Reeves, and DeBettencourt. We also reverse the
rejections of dependent claims 17, 19-26, and 32-38 for the same reasons.

SUMMARY
We find the provisional obviousness-type double patenting rejection is
moot.
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We reverse all rejections under 35 U.S.C. § 103(a) for claims 16, 17,
19-26, and 32-38 as obvious over Cseri, Reeves, and the other cited
references.
REVERSED

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