Ex Parte Krishnaswamy et al

Board of Patent Appeals and Interferences

Jun 12, 2012

10808223 (B.P.A.I. Jun. 12, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
______________

Ex parte SRIVATSA KRISHNASWAMY, NICHOLAS PARKYN,
JAYADEVA GALI BABU, and BIROSH THOMAS HELDAD
______________

Appeal 2010-004070
Application 10/808,223
Technology Center 2100
______________

Before JOHN C. MARTIN, LANCE LEONARD BARRY,
and ST. JOHN COURTENAY III, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-6, 11-13, and 15-26, which are all of the pending
claims.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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A. Appellants’ invention
Appellants’ invention relates generally to computer systems, and more
specifically, to using a data transformation adapter to transform a data object
from a first format to a second format. Specification 1:4-6. More
particularly, Appellants’ method includes: (a) receiving a message from a
communications line, the message including one or more data objects of a
first object type, wherein the message is in a first communications format;
(b) converting the message from the first communications format to a second
communications format; (c) converting the one or more data objects from
the first object type to a second object type, wherein the one or more data
objects are converted using a first set of one or more transformation classes,
each of the one or more transformation classes generated using mapping
rules; and (d) transmitting the converted one or more second object type data
objects to an application. Id. at 2:11-21.

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Appellants’ Figure 1 is reproduced below.

Figure 1 is an architecture diagram of a communications line including a
data transformation adapter in accordance with an embodiment of
Appellants’ invention. Id. at 3:5-7. Adapter 10 is coupled to middleware 12
and an application 16 by APIs (application programming interfaces) 14 and
18, respectively. Id. at 6:1-5. Adapter 10 includes communication/
registration layer 20, payload assembly/disassembly layer 22, transformation
layer 24, and method invocation layer 26. Id. at 6:5-8.
Payload assembly/disassembly layer 22 converts data from the
middleware-specific data format to a middleware-independent format. Id. at
6:30-31. Payload assembly/disassembly layer 22 converts the received
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messages to XML (extensible markup language1) or Java Objects, thereby
isolating upper layers from lower layers. Id. at 7:4-6.
Transformation layer 24 transforms data from the domain object
model (DOM) format to the application specific object model (ASOM)
format, and vice-versa. Id. at 4:17-19; 7:10-11. A domain object model
(DOM) is an object oriented representation of domain entries, and
application specific object models (ASOMs) are definitions of objects in an
application. Id. at 5:1-4. Although in one exemplary embodiment domain
objects and application objects are Java objects, the adapter may be used
with any desired type of computer-readable object. Id. at 4:19-21.
Method invocation layer 26 maps high-level function to "atomic" API
calls, thereby invoking the required functionality of the application. Id. at
7:28-30.

1 See Rising reference (U.S. Patent Application Publication 2002/0120652
A1) ¶ 0008.
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Appellants’ Figure 3 is reproduced below.

Figure 3 is a flow diagram of the development, configuration, and run time
processes, in accordance with an embodiment of Appellants’ invention. Id.
at 16:19-20. The transformation operations discussed above are depicted by
the blocks 78-84 of the first run time process 54, which represents
transformation from DOM to ASOM format, and by blocks 86-92 of second
run time process 56, which represents transformation from ASOM to DOM
format. Id. at 17:1-18:16.
“In one embodiment, the DOM and ASOM objects types are
represented in XML schema.” Id. at 8:9-10. The Specification provides
specific examples of “XML code” for various functions, including
“identifying the source object for transformation” (id. at 11:3-4), “target
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object creation” (id. at 11:14), “source element selection” (id. at 12:40),
“applying the expression on source data elements and assigning them to the
target object” (id. at 13:10-11), “auto filling of the elements that helps to
assign similar elements of the source to the target” (id. at 14:9-10), and
“conditional mapping including assigning the elements based on
conditions.” Id. at 14:31-32. Also disclosed is an “example XML code used
to include the transformations rules.” Id. at 15:9-10.
The issue raised by the rejection under 35 U.S.C. § 112, first
paragraph, is whether the Application as filed describes transforming one or
more data objects in XML to non-XML.

B. The Claims on Appeal
The independent claims on appeal are claims 1, 11, 17, 22, and 26, of
which representative claim 1 reads as follows:
1. A method of data object transformation between a
middleware and a[n] application, the method comprising:
receiving a message from a messaging middleware by a
data transformation adapter, the message including one or more
data objects in an eXtensible Markup Language (XML),
wherein the message is a first communications format;
converting by the data transformation adapter the
message from the first communications format to a second
communications format;
converting by the data transformation adapter the one or
more data objects in XML to a non-eXtensible Markup
Language (non-XML), wherein the one or more data objects are
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converted using a first set of one or more transformation
classes, the one or more transformation classes being
configured to transform the one or more data objects in XML to
non-XML, each of the one or more transformation classes
generated using mapping rules, the mapping rules including
XML based syntax that uses rule specification guide to
facilitate transforming the one or more data objects in XML to
non-XML; and
transmitting by the data transformation adapter the one or
more data objects in non-XML to an application.
Claims App. (Br. 14).2 Dependent claim 2 further specifies that the first
communications format includes a middleware-dependent format and that
the second communications format includes a middleware-independent
format. Id.

C. The Rejections
1. Claims 1-6, 11-13, and 15-26 stand rejected under 35 U.S.C. § 112,
first paragraph, written description requirement. Final Action 5, para. 5.
2. Claims 22-25 stand rejected under 35 U.S.C. § 101 for reciting
nonstatutory subject matter. Id. at 7, para. 7.
3. Claims 1-6, 11-13, and 15-26 stand rejected under 35 U.S.C.
§ 103(a) for obviousness over Rising3 in view of Lavin.4 Id. at 9, para. 10.

2 Appeal Brief filed August 13, 2009.
3 U.S. Patent Application Publication No. 2002/0120652 A1, published
August 29, 2002.
4 U.S. Patent Application Publication No. 2003/0037174 A1, published
(Continued on next page.)
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II. DISCUSSION
A. The § 112 Rejection of Claims 1-6, 11-13, and 15-26
In an Amendment dated August 4, 2008, independent claims 1, 11, 17,
22, and 26 were amended to recite “transforming . . . one or more data
objects from XML to non-XML.” In the same Amendment, dependent
claims 4, 13, 20, and 25 were amended to recite that “the XML includes a
domain object model type and the non-XML includes an application-specific
object model type.” The term “non-XML” does not appear in the
Application as filed.
In the Final Action, the Examiner found that
the specification discloses using XML mapping rules to
transform objects from the DOM format to ASOM format
[p.17, lines 10 - 16]. The mapping rules are in the XML format;
however, the objects are in the DOM and ASOM format.
Therefore, it is submitted that the specification only discloses
converting between DOM object types and ASOM object types
and does not disclose “converting by the data transformation
adapter the one or more data objects in XML to a non-
eXtensible Markup Language (non-XML)”.
Final Action 7, para. 5 (brackets in original). Appellants responded by
arguing that
[a]s one non-limiting example, page 13, line 10 - page 14, line
21 describes exemplary code for target object creation. In other
words, the claimed invention describes transforming object data
in XML to non-XML target objects. The non-limiting
exemplary code noted above discloses a specification of a

February 20, 2003.
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process to transform a source object that can be represented by
XML data to a target object that can be represented by non-
XML data, such as in a Java object, or an object represented by
another programming language.
Br. 7. The Examiner responded in the Answer by more particularly finding
that the Specification describes using XML code to convert non-XML (i.e.,
Java) DOM objects to non-XML (i.e., Java) ASOM objects:
[P]. 13, line 10 - p. 14, line 21 of the specification provides
example XML code that may be used to copy similar variables
from source object to the target. The specification does not
disclose that the source object is in XML format. . . . The
specification discloses using XML mapping rules to transform
objects from the DOM format to ASOM format [p. 17, lines 10
- 16]. The mapping rules are in the XML format; however, the
objects are in the DOM and ASOM format. The specification
does not disclose that the DOM or ASOM format is the same as
the XML format. In fact, the specification identifies domain
objects and applications objects as JAVA objects [p. 4, lines 19
- 20]. The JAVA format is not the same as the XML format.
At best, the specification discloses performing transformation
between DOM JAVA objects (non-XML format) and ASOM
JAVA objects (non-XML format).
Answer 16-17 (emphasis added; brackets in original). Appellants, who did
not file a Reply Brief, have not addressed this specific reasoning of the
Examiner, let alone demonstrated error by the Examiner, as required to
satisfy their burden on appeal with respect to this ground of rejection. Cf. Ex
parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential):
The Examiner has the initial burden to set forth the basis
for any rejection so as to put the patent applicant on notice of
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the reasons why the applicant is not entitled to a patent on the
claim scope that he seeks — the so-called “prima facie case.”
. . . An appellant may attempt to overcome an
examiner’s obviousness rejection on appeal to the Board by
submitting arguments and/or evidence to show that the
examiner made an error in either (1) an underlying finding of
fact upon which the final conclusion of obviousness was based,
or (2) the reasoning used to reach the legal conclusion of
obviousness. Similarly, the applicant may submit evidence of
secondary considerations of non-obviousness. . . .
The panel then reviews the obviousness rejection for
error based upon the issues identified by appellant, and in light
of the arguments and evidence produced thereon.
(Citations omitted.)
We note that the Examiner’s above-quoted finding that “[t]he
specification does not disclose that the DOM or ASOM format is the same
as the XML format” (Answer 16) appears to contradict the Specification’s
disclosure that “assembly/disassembly layer 22 converts the received
messages to XML or Java Objects” (Spec. 7:4-6). However, this disclosure
of converting received messages to XML or Java Objects does not describe
converting an XML DOM object to a non-XML (i.e., Java) object or
converting a non-XML (i.e., Java) DOM object to an XML ASOM object.
We are also unpersuaded of Examiner error by Appellants’ additional
reliance (Br. 8) on page 8, lines 35-37 in arguing dependent claims 4, 13, 20,
and 25. These cited lines, which are part of “[a]n example ASOM XML
schema, having file name Person_asom.xsd” (Spec. 8:27), read as follows:

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Appellants argue that these lines “disclose[] certain application-specific
constra[i]nts of the non-XML object (e.g., element name is ‘Id’ and element
type is ‘integer.’).” Br. 8. It seems to us that this interpretation is consistent
with the Examiner’s position that Appellants’ Specification describes using
XML code to convert a non-XML (i.e., Java) DOM object to a non-XML
(i.e., Java) object.
For the foregoing reasons, we sustain the § 112 rejection of claims 1-
6, 11-13, and 15-26.

B. The § 101 Rejection of Claims 22-25
Claim 22, the sole independent claim rejected under 35 U.S.C. § 101,
reads as follows (emphasis added):
22. A system for data object transformation, the system
comprising:
a communications line;
a computer readable medium executable on a computing
system, the computing system coupled to the communications
line, the computer readable medium having a transformation
adapter, the transformation adapter including:
an assembly/disassembly layer configured to
convert messages from a first communications format to a
second communications format;
a transformation layer configured to convert data
objects in an eXtensible Markup Language (XML) to a non-
eXtensible Markup Language (non-XML) using one or more
transformation classes, the one or more transformation classes
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being configured to transform the one or more data objects in
XML to non-XML; and
a method invocation layer;
a transformation class generator coupled to the
transformation adapter, the transformation class generator
configured to generate the one or more transformation classes
using transformation mapping rules, the mapping rules
including XML based syntax that uses rule specification guide
to facilitate transforming the one or more data objects in XML
to non-XML; and
an application coupled to the transformation adapter,
wherein the application transmits data to and receives data from
the method invocation layer.
The Examiner concluded that the claimed subject matter that is “non-
statutory” (i.e., patent ineligible) under 35 U.S.C. § 101 because “[t]he
transformation adapter, transformation class generator, and an application
are interpreted as software only,” “[t]he communication line as disclosed in
the specification (p. 21, lines 1 - 5) includes wireless or infrared signals,”
and “the term computer readable medium is sufficiently broad to include
wireless signals, which are non-statutory subject matter.” Final Action 7,
para. 7.
Although not cited in the rejection, we assume the Examiner is relying on In
re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007), which explains: “A
transitory, propagating signal like Nuijten's is not a ‘process, machine,
manufacture, or composition of matter.’ Those four categories define the
explicit scope and reach of subject matter patentable under 35 U.S.C. §101;
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thus, such a signal cannot be patentable subject matter.” See also David J.
Kappos, Subject Matter Eligibility of Computer Readable Media, 1351 OFF.
GAZ. PAT. OFFICE 212 (Feb. 23, 2010)). (“A claim drawn to . . . a
computer readable medium that covers both transitory and non-transitory
embodiments may be amended to narrow the claim to cover only statutory
embodiments to avoid a rejection under 35 U.S.C. § 101 by adding the
limitation ‘non-transitory’ to the claim.”). For the following reasons,
Appellants have not persuaded us of error in the rejection.
The Application as filed does not recite a computer readable medium
or computer readable media. The term “a computer readable medium” was
added to claim 22 by an Amendment dated January 12, 2009 (at 6). The
Examiner found that
[the] specification does not provide antecedent basis for the
term “computer readable medium”. The specification provides
support for communication media that includes wireless signals
[p. 21, lines 1 - 14] and disk storage [p. 20, lines 18 - 25].
Without antecedent basis for the term “computer readable
medium”, it is submitted that the term computer readable
medium is sufficiently broad to include wireless signals, which
are non-statutory subject matter.
Final Action 8, para. 7.
Appellants first argue that MPEP § 2173.05(e) (8th ed. rev. July 2010)
states that “[t]he mere fact that a term or phrase used in the claim has no
antecedent basis in the specification disclosure does not mean, necessarily,
that the term or phrase is indefinite.” Br. 8. This argument misapprehends
the Examiner’s position, which is not based on any alleged indefiniteness.
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Instead, the Examiner concluded that it is reasonable to construe the term
“computer readable medium” broadly in the absence of a narrowing
definition in the Specification.
Appellants also argue (id. at 9) that the following passage in the
Specification “provides ample support for a computer readable medium”:
Computer program instructions for implementing the
network inventory adapter may be stored on the disk storage
device 225 until the processor 200 retrieves the computer
program instructions, either in full or in part, and stores them in
the main memory 220. The processor 200 then executes the
computer program instructions stored in the main memory 220
to implement the features of network inventory adapter. The
program instructions may be executed with a multiprocessor
computer having more than one processor.
Specification 20:18-24. However, this passage does not purport to offer a
definition of the phrase “computer readable medium,” let alone define that
term so to exclude transitory computer readable media, such as wireless
signals. In the absence of such a definition, the Examiner was correct to
construe the recited “a computer readable medium” as broad enough to read
on wireless signals.
The rejection of claim 22 under 35 U.S.C. § 101 is accordingly
affirmed, as is the rejection on that ground of dependent claims 23-25, which
Appellants have not separately argued.

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C. The § 103(a) Rejection of Claims 1-6, 11-13, and 15-26 (Rising in View
of Lavin)
Rising’s invention relates generally to multimedia content
descriptions and more particularly to transforming and encoding such
descriptions of multimedia. Rising ¶ 0002.
Figure 1A of Rising is reproduced below.

Figure 1A is a diagram illustrating encoding of an MPEG-7 instance
document according to an embodiment of Rising’s invention. Id. at ¶ 0015.
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This embodiment begins with a DDL (description definition language5)
instance document 105 that encodes content 103 for use in a general
application domain 111 as defined by DDL schema 101. Id. at ¶ 0023. In
cases when the content 103 is to be used in an application specific domains
A 117 or B 123, the instance document 105 likely contains unnecessary
elements. Id. Therefore, DDL to ASDL (application specific description
language6) translators 113 and 119 transform the DDL instance document
105 into instance documents specific to application domains A (117) and B
(123), respectively. Id. In one embodiment, the translators 113 and 119 use
transform functions defined in an XSLT (XML stylesheet translation)
document that maps between DDL and ASDL namespaces. Id. Rising also
explains that “[b]ecause XSLT functions can translate between any text-
based document, an ASDL may [be]written in a language other than XML,
depending on the requirements of the domain.” Id. at ¶ 0024.
A DDL encoder 107 uses a frequency table that associates the DDL
namespace, i.e., the names for the elements and attributes, with variable-
length codes or tokens based on the relative frequency with which the names
appear within the DDL schema 101. Id. at ¶ 0027. The same DDL encoder
107 is used to create binary instance documents 115, 121 for application
specific domains A (117) and B (123). Id. at ¶ 0028.

5 Rising ¶ 0006.
6 Rising ¶ 0022.
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Comparing claim 1 to Rising, the Examiner reads all of the recited
elements on Rising with the exception of the messaging middleware, a
message in a first communications format, and converting by the data
transformation adapter the message from the first communications format to
a second communications format, for which teachings the Examiner relies
on Lavin. Final Action 10. Appellants do not challenge the Examiner’s
reliance on Lavin for these teachings.
Instead, Appellants dispute the Examiner’s finding (Final Action 7-8)
that the step of “converting by the data transformation adapter the one or
more data objects in XML to a non-eXtensible Markup Language (non-
XML)” reads on the use of XSLT functions by Rising’s translators 113 and
119 and Rising’s above-noted disclosure (in ¶ 0024) that ASDL may be
written in a language other than XML. Appellants argue that the Examiner’s
reliance on XSLT in Rising is misplaced because “the claimed invention is
an alternative solution for XSLT.” Br. 11. As support for this argument,
Appellants, inter alia, quote the following passage from their Specification:
In communications network environments, each
application will have different data schema. In order to achieve
application integration, the messages may need to be converted
from one format to another format. One application for
performing such a conversion is by using extensible stylesheet
language (XSL) transformations (XSLT). XSLT is used to
transform an extensible markup language (XML) document into
a new XML document, which can have a different structure.
However, XSLT and other existing methods have not
fully addressed the issues relating to data transformation in a
communications network environment. Accordingly, there
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remains a need for a method and system device that solves
existing shortcoming relating to data transformation.
Specification 1:30-2:8. Appellants’ reliance on the subject matter in this
passage in the Specification is misplaced because application claims must be
given their broadest reasonable interpretation consistent with the
specification, and limitations appearing in the specification are not to be read
into the claims. In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989).
Appellants also argue that
claim 1 discloses employing mapping rules including XML
based syntax that uses rule specification guide to facilitate
transforming the one or more data objects in XML to non-
XML. In other words, the mapping rules facilitate
transformation of the data objects to non-XML data without
resorting to XSLT transformation and its attendant
inefficiencies (e.g. due to xpath queries).
Br. 11. The Examiner responded in the Answer (at 18) by concluding that
“the claimed mapping rules to transforming the data objects do not preclude
the use of XSLT transformation” and reading the claim 1 language at issue
on Rising as follows:
The XSLT document in Rising is an XML based document that
contains mapping rules (transform functions defined in an
XSLT document that maps between DDL and ASDL
namespaces; paragraph 0023) including XML based syntax
(XSLT, XML stylesheet translation; paragraph 0023) that uses
rule specification guide to transform the one or more data
objects in XML (DDL for MPEG-7 multimedia content is based
on the XML; paragraph 0008) to non-XML (ASDL may written
in a language other than XML; paragraph 0024). The XSLT in
Rising meets the limitation “mapping rules including XML
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based syntax that uses rule specification guide to facilitate
transforming the one or more data objects in XML to non-
XML”. The claims do not recite or suggest that the mapping
rules can not be XSLT.
Answer 18. Appellants, who do not file a Reply Brief, have not addressed
this specific reasoning of the Examiner, as required to satisfy their burden on
appeal with respect to this ground of rejection. Frye, 94 USPQ2d at 1075.
The rejection of claim 1 is therefore sustained, as is the rejection of
independent claims 11, 17, 22, and 26, as to which Appellants repeat their
claim 1 arguments. Br. 12. The rejection of the dependent claims (viz.,
claims 2-6, 12, 13, 15, 16, 18-21, and 23-25 is sustained because Appellants
treat them as standing of falling with the independent claims. Id. at 12.

III. DECISION
The Examiner’s decision that claims 1-6, 11-13, and 15-26 are
unpatentable to Appellants is affirmed.
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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2011).

AFFIRMED

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