Ex Parte Douglis et al

Board of Patent Appeals and Interferences

Apr 29, 2010

10458561 (B.P.A.I. Apr. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte FREDERICK DOUGLIS, ARUN KWANGIL IVENGAR, and
LAKSHMISH MACHEERI RAMASWAMY
____________________

Appeal 2008-002724
Application 10/458,5611
Technology Center 2100
____________________

Decided: April 29, 2010
____________________

Before JOHN A. JEFFERY, JEAN R. HOMERE and JAY P. LUCAS,
Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed June 10, 2003. The real party in interest is International
Business Machines Corporation.
Appeal 2008-002724
Application 10/458,561

STATEMENT OF THE CASE
Appellants appeal from a final rejection of claims 1 to 33 under
authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).

We affirm.

Appellants’ invention relates to a method for detecting similar subsets
in web pages so they can be efficiently stored or cached. Three different
methods are disclosed. (Spec. 2, 3). In the words of Appellants:
These observations have led to fragment-
based publishing, wherein the web content is
published and cached at a finer granularity than
that of the entire web page. Challenger et al.,
"System for Efficiently Creating Dynamic Web
Content," Proceedings of IEEE INFOCOM 2000,
May 2000, the disclosure of which is incorporated
by reference herein, describes an example of the
fragment-based publishing technique.
Some advantages of fragment-based
publishing and caching include: (i) increasing the
cacheable content of a web site by separating the
non-personalized content from the personalized
content and marking them as such; (ii) reducing
the amount of data invalidations occurring in
caches; and (iii) improving the disk-space
utilization at caches.
There have been considerable research
efforts on the performance and benefits of the
fragment-based publishing and caching of web
pages. However, existing approaches for
fragment-based web site design assume that the
web pages are fragmented manually at their
respective web sites. However, manual
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fragmentation of web pages is known to not only
be costly, but also error-prone.

Techniques for automatically detecting
similar subsets (e.g., fragments) in electronic
documents such as dynamic content-based data,
e.g., web pages. The techniques of the invention
may perform a systematic analysis of the web
pages with respect to one or more of their
information sharing behavior, their personalization
characteristics, and their change pattern over time.
Thus, the invention may be applied to discover
fragments in web pages of web sites that are most
beneficial for caching the contents of the web site.
The present invention also comprises techniques
for publishing electronic documents with
automatic fragment detection.

(Spec. 2, ll. 13 to 26; 34, ll. 4 to 11).

Claims 12 and 1 are exemplary, and are reproduced below:
12. A method of detecting similar subsets in a plurality of
versions of an electronic document, comprising the steps of:

parsing the plurality of versions into at least one tree
comprised of a plurality of nodes;

examining at least one node to determine a subset sl of
the node similar to a subset s2 of another node; and

determining differences between subset s1 and subset s2.

1. A method of detecting similar subsets in at least one
electronic document, comprising the steps of:

parsing the at least one document into at least one tree
comprised of a plurality of nodes;
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grouping nodes of the at least one tree based on sizes;
and

identifying at least one subset of the at least one node
similar to at least one subset of another node.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Balasubramaniam US 6,359,633 B1 Mar. 19, 2002
Borson US 2003/0237047 A1 Dec. 25, 2003

Cobena and Marian, Detecting Changes in XML Documents,
Proceedings of the 18th International Conference on Data Engineering
(2002) (hereinafter “Cobena”).

REJECTIONS
The Examiner rejects the claims as follows:

R1: Claims 12 to 15, 18 to 26, 28, 29, and 31 to 33 stand rejected under
35 U.S.C. § 102(b) for being anticipated by Cobena.
R2: Claims 1 to 4, 7 to 11, 27 and 30 stand rejected under 35
U.S.C. § 103(a) for being obvious over Cobena in view of
Balasubramaniam.
R3: Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) for being
obvious over Cobena in view of Balasubramaniam and further in view of
Borson.
R4: Claims 16 and 17 stand rejected under 35 U.S.C. § 103(a) for being
obvious over Cobena in view of Borson.

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Appellants contend that Cobena does not anticipate nor render
obvious the claimed subject matter in combination with the other references,
for failure of the references to teach claimed limitations. The Examiner
contends that each of the claims is properly rejected.
We review the rejections in the order argued by Appellants. Only
those arguments actually made by Appellants have been considered in this
opinion. Arguments that Appellants could have made but chose not to make
in the Briefs have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii).

ISSUE
The principal issue before us is whether Appellants have shown that
the Examiner erred in rejecting the claims under 35 U.S.C. § 102 and
35 U.S.C. § 103(a). The issue specifically turns on whether Cobena and the
other references respectively teach examining nodes to discover similarities
based on the sizes of the node, ancestor nodes, or similarities of subsets. A
second issue concerns whether the Borson reference teaches encoding by
shingles.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellants have invented a method of automatically detecting subsets of
whole web pages, called fragments. (Spec. 3, ll. 4, 5). Fragments are
more easily stored, cached, delivered and published as web pages. (Spec.
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2, ll. 1 to 3). Fragments are identified by parsing electronic documents
into nodes and then grouping the nodes based on the size on the node,
noting similarities in subsets of the nodes, or by identifying a relationship
to an ancestor fragment. (Spec. 3). Analyzing overlapping shingles of
nodes may also reflect a similarity of the nodes. (Spec. 16, l. 25).
2. The reference Cobena teaches parsing electronic documents into trees
and analyzing the nodes of the trees for fragment similarities. (Abstract).
Though useful in comparing old and new versions of documents (p. 1, ¶
6), the techniques are used for millions of unrelated documents. (p. 1, ¶
2).
3. The Balasubramaniam reference compares nodes of a document tree
based on size. (col. 5, l. 29).
4. The reference Borson teaches that hash values (shingles) may be taken of
document nodes, and if the hash values are shown to be similar, the
nodes are similar. (Borson ¶ [0055]).

PRINCIPLES OF LAW
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
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indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).

“It is common sense that familiar items may have obvious uses
beyond their primary purposes, and a person of ordinary skill often will be
able to fit the teachings of multiple patents together like pieces of a puzzle.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 402 (2007).
References within the statutory terms of 35 U.S.C. § 103 qualify as
prior art for an obviousness determination only when analogous to the
claimed invention. In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). Two
separate tests define the scope of analogous prior art: (1) whether the art is
from the same field of endeavor, regardless of the problem addressed and,
(2) if the reference is not within the field of the inventor's endeavor, whether
the reference still is reasonably pertinent to the particular problem with
which the inventor is involved. In re Deminski, 796 F.2d 436, 442 (Fed. Cir.
1986); see also In re Wood, 599 F.2d 1032, 1036 (CCPA 1979) and In re
Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).). Furthermore, “‘there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness’ . . . [H]owever, the analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l v. Teleflex Inc.,
550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).

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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) (citation omitted).
Anticipation of a patent claim requires a finding that the claim
at issue ‘reads on’ a prior art reference. In other words, if
granting patent protection on the disputed claim would allow
the patentee to exclude the public from practicing the prior art,
then that claim is anticipated, regardless of whether it also
covers subject matter not in the prior art.

Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed. Cir. 1999)
(internal citations omitted).

ANALYSIS
From our review of the administrative record, we find that the
Examiner presents evidence for a prima facie case on pages 3 to 12 of the
Examiner’s Answer. In opposition, Appellants present a number of
arguments.

Arguments with respect to the rejection
of claims 12 to 15, 18 to 26, 28, 29, and 31 to 33
under 35 U.S.C. § 102(b) [R1]

The Examiner has rejected the noted claims for being anticipated by
Cobena. Appellants argue that “Cobena does not disclose the step of
examining at least one node to determine a subset s1 of the node similar to a
subset s2 of another node.” (App. Br. 8, middle). We do not find this
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argument to be based on an accurate reading of the reference Cobena. As
discussed by the Examiner, Cobena’s Figure 2 and its companion text
clearly show the examination of the nodes of the parsed documents and the
discovery of the similar subsets of the nodes (e.g. Title-Digital Cameras) in
the trees. (Cobena, p. 6, top). Note the discussion on difference analysis in
the Examiner’s Answer. (Ans. 14, top). Appellants’ argument about their
algorithm being more powerful than that of the reference is irrelevant to the
claimed limitations. (App. Br. 8, bottom). We do not find error in the
rejection on this point.
With regard to claims 23, 29 and 32, Appellants argue that Cobena
does not “disclose maintaining an ancestor fragment set…and determining a
similarity.” (Brief 8, bottom to Brief 9, top). We are persuaded by
Cobena’s disclosure of matching parents of nodes and analyzing the path to
the ancestor nodes that the claimed determination of similarities to ancestor
fragments is disclosed. (Cobena, p. 6, ¶ 1). We do not find error in the
Examiner’s rejection on this point.

Arguments with respect to the rejection
of claims 1 to 11, 16, 17, 27, 30
under 35 U.S.C. § 103(a) [R2, R3 and R4]

The Examiner has found the noted claims to be obvious over Cobena
and Balasubramaniam and, with respect to claims 5, 6, 16, and 17,
additionally over Borson. Appellants contend that Balasubramaniam does
not look to the size of the nodes, as claimed, but rather to the size of the
trees. (App. Br. 10, middle). We agree that Balasubramaniam does look to
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the size of the trees in part of the disclosed analysis. (Col. 4, bottom).
However, Balasubramaniam also teaches finding similarities in nodes based
on the size of the nodes themselves. (Col. 5, ll. 26 to 32). This latter
teaching renders obvious the noted claims.
We find that the Balasubramaniam reference addresses the same field
of endeavor and the same problem of node matching that the Appellants and
Cobena address. Thus, the references are properly combined. (See In re
Clay, and KSR, cited above.)
With respect to rejections [R3] and [R4] of claims 5, 6, 16, and 17
respectively, we find the teaching of Borson of comparing nodes based on
comparing their hash values render the claims obvious. Hash values, which
change based on any change of the value of a node, are taught by Borson to
be the basis of finding similar nodes. (See FF#4 above.) The Examiner has
combined this teaching with those of the base references. We do not find
error in this combination.

CONCLUSIONS OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in rejecting claims 1 to 33 as expressed in [R1] to
[R4] above.
DECISION
The Examiner’s rejection of claims 1 to 33 respectively under [R1] to
[R4] is affirmed.
AFFIRMED

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