Ex Parte Eppstein et al

Board of Patent Appeals and Interferences

Jan 30, 2012

10832575 (B.P.A.I. Jan. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHRISTOPHER MARK EPPSTEIN and FREDERICK VONG
___________

Appeal 2009-012972
Application 10/832,575
Technology Center 2100
____________

Before ERIC S. FRAHM, GREGORY J. GONSALVES, and
ERIC B. CHEN, Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-012972
Application 10/832,575

2
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1, 2, 4-12, 14-22 and 24-30. Claims 3, 13, and 23 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse and
enter a new ground of rejection pursuant to our authority under 37 C.F.R.
§ 41.50(b).
STATEMENT OF THE CASE
Appellants’ invention relates to a mechanism for resolving conflicts
between actions that target elements of a hierarchical data structure.
(Abstract.)
Claim 1 is exemplary, with disputed limitations in italics:
1. A machine-implemented method, comprising:
determining a set of applicable actions that are applicable to an
element of a target hierarchical data structure, wherein determining the set of
applicable actions comprises automatically selecting, from among a plurality
of actions, only actions that are associated with criteria that are satisfied by
the element of the target hierarchical data structure;
selecting a particular action from the set of applicable actions;
determining a set of conflicting actions that comprises the particular
action and one or more actions in the set of applicable actions that conflict
with the particular action;
determining whether the particular action is associated with a highest
priority among actions in the set of conflicting actions;
in response to a determination that the particular action is associated
with the highest priority:
performing the particular action relative to the element; and
canceling actions in the set of conflicting actions other than the
particular action such that the actions in the set of conflicting actions
other than the particular action are not performed relative to the
element.

Appeal 2009-012972
Application 10/832,575

3
Claims 11, 12 and 14-20 stand rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
Claims 1, 2, 4-12, 14-22 and 24-30 stand rejected under 35 U.S.C.
§ 103(a) as being obvious over Jennings (U.S. Patent No. 6,717,593) and
Peloquin (U.S. Patent No. 6,751,719).
ANALYSIS
§ 101 Rejection
We are persuaded by Appellants’ arguments (App. Br. 5; see also
Reply Br. 2-3) that independent claim 11 complies with 35 U.S.C. § 101 as
statutory subject matter.
The Examiner found that independent claim 11 is directed to non-
statutory subject matter. (Ans. 4-5.) In particular, the Examiner found that
the recitation of “machine-readable medium” includes both tangible
embodiments (e.g., machine-readable media) and intangible embodiments
(e.g., carrier electrical signals, transmission media, electromagnetic or
optical signals or a carrier wave). (Ans. 4-5.) We do not agree.
Appellants’ Specification explains that “[t]he term ‘machine-readable
medium’ . . . refers to any medium that participates in providing data that
causes a machine to operation [sic] in a specific fashion” including
“[t]ransmission media . . . [in] the form of acoustic or light waves, such as
those generated during radio-wave and infra-red data communications.”
(¶ [0058].) The Specification also explains that “[c]ommon forms of
machine-readable media include, for example, a floppy disk, a flexible disk,
hard disk, magnetic tape, or any other magnetic medium, a CD-ROM, any
other optical medium, punchcards, papertape, any other physical medium
with patterns of holes . . . .” (¶ [0059].) In other words, the Specification
Appeal 2009-012972
Application 10/832,575

4
provides embodiments for both tangible (e.g., magnetic medium, optical
medium or physical medium with patterns of holes) and intangible (e.g.,
acoustic or light waves) machine-readable media.
The preamble of independent claim 11 recites “[a] tangible machine-
readable medium.” The term “tangible” thus limits “machine-readable
medium” to physical media and excludes intangible media such as
electromagnetic signals. Therefore, claim 11 is directed towards the
statutory class of a “manufacture” under 35 U.S.C. § 101.
Accordingly, we do not sustain the rejection of independent claim 11
under 35 U.S.C. § 101. Claims 12 and 14-20 depend from independent
claim 11 and we do not sustain the rejection of these claims under 35 U.S.C.
§ 101 for the same reasons discussed with respect to independent claim 11.
§ 103 Rejection
We are persuaded by Appellants’ arguments (App. Br. 5-7; see also
Reply Br. 4-5) that the combination of Jennings and Peloquin would not
have rendered obvious independent claim 1, which includes the disputed
limitation “automatically selecting, from among a plurality of actions, only
actions that are associated with criteria that are satisfied by the element of
the target hierarchical data structure.”
The Examiner found that the creation of an XML document of
Jennings by Web programmers via a Document Object Model (DOM) which
permits programs and scripts to be dynamically accessed and updated
corresponds to the disputed limitation. (Ans. 5-6, 17.) In particular, the
Examiner found that because the Specification “does not describe any
related or indicated concepts” such as “automatically selecting,” Jennings
teaches the disputed limitation. (Ans. 17.) We do not agree.
Appeal 2009-012972
Application 10/832,575

5
In reference to block 202 of Figure 2, Appellants’ Specification
explains that “one or more actions are selected from among a plurality of
actions based on whether a particular element of a target data structure
satisfies criteria that are associated with those actions.” (¶ [0016].) The
Specification further explains that “[a]ccording to one embodiment of the
invention, those techniques are performed by computer system 400 in
response to processor 404 executing one or more sequences of one or more
instructions contained in main memory 406.” (¶ [0057].) In other words,
the “one or more actions [that] are selected from among a plurality of actions
based on whether a particular element of a target data structure satisfies
criteria that are associated with those actions” is performed using the
computer system 400 and therefore, is “automatically” selected. Thus, the
Examiner’s interpretation of “automatically selecting” is not consistent with
the Specification.
Jennings relates to “[i]nterface description documents [that] define the
appearance and behavior of a user interface” (Abstract) for a telephony user
interface (col. 1, ll. 7-8). Jennings discloses that “Web programmers create
and build XML documents, navigate their structure, and add, modify, or
delete elements and content by means of a Document Object Model
(DOM).” (Col. 5, ll. 30-32.) In other words, Jennings teaches or suggests
that Web programmers “add, modify, or delete elements,” rather than
“automatically selecting” such elements, as required by claim 1.
Thus, we do not agree with the Examiner that the combination of
Jennings and Peloquin would have rendered obvious independent claim 1,
which includes the limitation “automatically selecting, from among a
Appeal 2009-012972
Application 10/832,575

6
plurality of actions, only actions that are associated with criteria that are
satisfied by the element of the target hierarchical data structure.”
Accordingly, we do not sustain the rejection of independent claim 1
under 35 U.S.C. § 103(a). Claims 2 and 4-10 depend from independent
claim 1. Therefore, we do not sustain the rejection of claims 2 and 4-10
under 35 U.S.C. § 103(a) for the same reasons discussed with respect to
independent claim 1.
Independent claims 11 and 21 recite limitations similar to those
discussed with respect to independent claim 1. We do not sustain the
rejection of claims 11 and 21, as well as claims 12, 14-20, 22 and 24-30,
which depend from claim 11 and 21, for the same reasons discussed with
respect to claim 1.

NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b)
We enter the following new ground of rejection:
Claims 1, 11 and 21 are rejected under 35 U.S.C. § 103(a) as being
obvious over Jennings and Peloquin.
The combination of Jennings and Peloquin would have rendered
obvious independent claim 1, which includes the limitation “automatically
selecting, from among a plurality of actions, only actions that are associated
with criteria that are satisfied by the element of the target hierarchical data
structure.”
As discussed previously, Jennings teaches that “Web programmers
create and build XML documents, navigate their structure, and add, modify,
or delete elements and content by means of a Document Object Model
(DOM).” (Col. 5, ll. 30-32.) Thus, modifying Jennings such that the XML
Appeal 2009-012972
Application 10/832,575

7
documents are built and created by “automatically selecting” elements and
content to add, modify, or delete would have been obvious to an ordinarily
skilled artisan because providing an automatic or mechanical means to
replace a manual activity which accomplished the same result is not
sufficient to distinguish over the prior art. See In re Venner, 262 F.2d 91, 95
(CCPA 1958).
Therefore, independent claim 1 is obvious under 35 U.S.C. § 103(a)
over Jennings and Peloquin. Independent claims 11 and 21 recite limitations
similar to those discussed with respect to independent claim 1.
Because the Board of Patent Appeals and Interferences is a review
body, rather than a place of initial examination, we have not reviewed
claims 2, 4-10, 12, 14-20, 22 and 24-30 to the extent necessary to determine
whether the combination of Jennings and Peloquin renders any of these
claims obvious. We leave it to the Examiner to determine the
appropriateness of any further rejections of dependent claims 2, 4-10, 12,
14-20, 22 and 24-30 under 35 U.S.C. § 103(a).
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides that a “new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
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 ground of rejection to
avoid termination of proceedings (37 C.F.R. § 1.197 (b)) as to the rejected
claims:
Appeal 2009-012972
Application 10/832,575

8
(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 37 C.F.R. § 41.52 by the Board upon the same
record ….

DECISION
The Examiner’s decision to reject claims 1, 2, 4-12, 14-22 and 24-30
is reversed.
New ground of rejection has been entered under 37 C.F.R. § 41.50(b)
for claims 1, 11 and 21, rejected as obvious over Jennings and Peloquin.

REVERSED
37 C.F.R. § 41.50(b)

msc