Ex Parte Peskin

Patent Trial and Appeal Board

Jul 30, 2014

11668368 (P.T.A.B. Jul. 30, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MARK PESKIN
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Appeal 2012-002259
Application 11/668,368
Technology Center 2100
____________

Before MAHSHID D. SAADAT, JOHN A. EVANS,
and MICHELLE N. WORMMEESTER, Administrative Patent Judges.

WORMMEESTER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–24, which constitute all the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

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STATEMENT OF THE CASE
Introduction
Appellant’s invention relates to a system and method for converting a
document in one format into a document in another format. (See Spec. ¶¶ 1–
3, 8.) Exemplary independent claim 1 reads as follows:
1. An output management method comprising:
generating a bifurcated transformation graph
including a plurality of formal nodes connected by a
plurality of transformation edges and at least one
production edge;
simplifying the bifurcated transformation graph to
remove the at least one production edge; and
identifying at least one optimal route through the
simplified bifurcated transformation graph for efficient
document management in a computer system.

Applied Prior Art
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Konda et al. (Konda) US 2003/0041095 A1 Feb. 27, 2003
Wang et al. (Wang) US 2005/0289526 A1 Dec. 29, 2005
Hauser US 2007/0018986 A1 Jan. 25, 2007

Rejections
Claims 10–21 stand rejected under 35 U.S.C. § 101 as being directed
to non-statutory subject matter. (See Ans. 4–6.)
Claims 19–21 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
(See Ans. 6–7.)
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Claims 1–9 and 24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Konda. (See Ans. 7–10.)
Claims 10–22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Konda and Hauser. (See Ans. 11–18.)
Claim 23 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Konda, Wang, and Hauser. (See Ans. 18–19.)

ANALYSIS
Rejection under 35 U.S.C. § 101
Appellant argues that the Examiner has erred in rejecting independent
claims 10 and 19 because the claims recite sufficient physical structure. (See
App. Br. 5.) We agree with Appellant.
In rejecting claims 10 and 19, the Examiner finds that the recited
features are directed to abstract concepts and software implementations.
(See Ans. 5.) Although each of these claims recites an algorithm for output
management, (see App. Br. 20–21), which constitutes an abstract concept,
the claims, as Appellant points out, also recite tangible elements, (see id. at
5–6). In particular, claim 10 recites the elements “computer readable
storage” and “processing unit,” (see id. at 5, 20), while claim 19 recites the
elements “computer readable storage” and “processor,” (see id. at 6, 21).
Claim 10 further recites that the processing unit “access[es]” a graph that is
stored in the computer readable storage. (See id. at 5, 20.) Thus, claim 10
requires some physical connection (e.g., an access port) between the
computer readable storage and the processing unit. Claim 19 similarly
requires some physical connection between the processor and the computer
readable storage. (See id. at 6, 21.) Accordingly, we are persuaded that
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claims 10 and 19 recite sufficient physical structure such that the claims
cover patent-eligible subject matter.
In view of the foregoing, we do not sustain the Examiner’s § 101
rejection of claims 10–21.

Rejection under 35 U.S.C. § 112, second paragraph
Referring to paragraphs 17–35 of the specification, Appellant argues
that the Examiner has erred in rejecting independent claim 19 because the
specification discloses the requisite corresponding structure under 35 U.S.C.
§ 112, sixth paragraph, for each recited means-plus-function limitation. (See
Reply Br. 3–4, App. Br. 4.) We agree with Appellant.
According to the Examiner, claim 19 is indefinite because the
specification fails to link a structure to the claimed function for each means-
plus-function limitation. (See Ans. 6.) The Examiner also notes that the
means-plus-function limitations are improper because they recite a
processor, which the Examiner finds constitutes “sufficient structure . . . for
achieving the specified function.” (See id. at 22.) We disagree with the
Examiner’s position that claim 19 is indefinite. Although claim 19 recites a
processor, (see App. Br. 21), the Examiner has not identified any teachings
in the specification that link the processor to the claimed functions. In fact,
the specification links a transformation chaining algorithm (which
implements the well-known Dijkstra algorithm) to the claimed functions.
(See Spec. ¶¶ 16, 22–23, 26, 30 (bifurcating step); ¶¶ 23, 26, 30–31
(simplifying step); ¶¶ 18–22, 24, 26, 32 (identifying step).) Accordingly, as
Appellant indicates, it is the disclosed “special-purpose machine”
programmed to perform the transformation chaining algorithm that
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constitutes the requisite corresponding structure under 35 U.S.C. § 112, sixth
paragraph. (See Spec. ¶ 37; see also App. Br. 7.)
In view of the foregoing, we do not sustain the Examiner’s § 112,
second paragraph, rejection of claims 19–21.

35 U.S.C. § 103(a) rejection over Konda
1. Claims 1, 2, 5, and 7–91
Appellant argues that the Examiner has erred in rejecting independent
claim 1 because Konda fails to disclose three features: (i) transformation
edges; (ii) a production edge; and (iii) simplifying the transformation graph
to remove the production edge. (See App. Br. 8–9.) We disagree.
First, Appellant asserts that the Examiner does not specify where in
Konda’s drawings the recited transformation edges and production edges are
shown, and then contends without further explanation that the Examiner
does not show a transformation edge in Konda. (See App. Br. 8–9.) The
Examiner points out, however, that Konda discloses a transformation graph
with nodes and directed edges between those nodes. (See Ans. 8, 23–24; see
also Konda ¶ 82.) Konda teaches that a node is “a specific document
format” and an edge is “a connection between two nodes, which reflects the
existence of one or more converters that are able to convert a document in
the source format into a document in the target format.” (See Konda ¶¶ 60,
61). These teachings are consistent with Appellant’s specification, which
Appellant describes “shows transformations represented by directed edges

1 Appellant’s discussion of claim 6 is relevant instead to claim 7, (see App.
Br. 11, 19), and we therefore consider claim 7 in light of that discussion.
We treat claim 6 as not being argued.
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(i.e., connecting two different format nodes).” (See Spec. ¶ 16; see also
App. Br. 8.) Accordingly, we are unpersuaded of error in the Examiner’s
finding that Konda discloses transformation edges.
Second, Appellant contends that Konda’s “print request does not
modify content” and therefore does not teach a production edge. (See App.
Br. 8.) As the Examiner points out, however, Appellant’s specification does
not provide a clear definition of the term “production edge.”2 (See Ans. 23.)
Rather, Appellant’s specification presents an example of a production:
addition of a fax cover sheet. (See Spec. ¶ 2.) Similarly, Konda’s
specification presents an output in hard copy form, such as paper. (See
Konda ¶ 131; see also Ans. 8, 24.) Accordingly, we are unpersuaded of
error in the Examiner’s finding that Konda discloses a production edge. (See
also Konda ¶¶ 131, 138, 140 (creating a mail message that includes both the
status of the conversion and the output file).)
Finally, Appellant contends that the Examiner’s conclusion of
obviousness with respect to the simplifying step is improper because Konda
cannot teach removing a production edge if Konda does not disclose a
production edge. (See App. Br. 9.) For the reasons discussed above, we find
that the Examiner has shown that Konda discloses a production edge. The
Examiner further shows that Konda also teaches removing all edges on a
forbidden list to determine the optimal path. (See Ans. 8–9, 25; see also
Konda ¶¶ 165, 168.) This teaching supports removing a production edge
when the production edge is on the forbidden list. (See Ans. 9, 25.)

2 Appellant raises the issue of whether the failure to provide a clear
definition of transformation edges and production edges invokes a rejection
under 35 U.S.C. § 112. (See Reply Br. 4.) We leave it up to the Examiner
to consider claim 1 for compliance with provisions of 35 U.S.C. § 112.
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Accordingly, we are unpersuaded of error in the Examiner’s conclusion of
obviousness.
2. Claim 3 and 4
Appellant argues that the Examiner has erred in rejecting dependent
claims 3 and 4 because Konda fails to disclose determining an optimal sub-
route and substituting the optimal sub-route into the simplified bifurcated
transformation graph, respectively. (See App. Br. 10–11.) We disagree.
Regarding claim 3, Appellant acknowledges that Konda discloses an
algorithm that includes an “Optimal Path selection” stage. (See App. Br. 10;
see also Konda ¶ 155.) Appellant then contends without explanation that the
algorithm provides no teaching of determining an optimal sub-route. (See
App. Br. 10.) Without further discussion of the missing claim elements from
Appellant, we are unpersuaded of error in the Examiner’s finding that Konda
discloses the determining step.
Regarding claim 4, Appellant acknowledges that Konda’s algorithm
also picks the best edgelet (or converter). (See App. Br. 10; see also Konda
¶¶ 155, 192.) According to Appellant, however, the algorithm provides no
teaching of the substituting step because “picking the best edgelet does not
substitute anything at all.” (See App. Br. 10.) Based on the cited portions
of Konda, we understand that the Examiner equates “picking” with
“substituting.” (See Ans. 9, 26; see also ¶ 155, 192.) Such equation is
reasonable, given that Konda teaches that an ETS (software that provides the
transformation service) uses the algorithm, publishes its available services in
the form of a transformation graph, and updates the graph when an edge or
edgelet is added or deleted. (See Konda ¶¶ 67, 159, 155.) Accordingly, we
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are unpersuaded of error in the Examiner’s finding that Konda discloses the
substituting step.
3. Claim 24
Appellant argues that the Examiner has erred in rejecting dependent
claim 24 because Konda fails to disclose beginning nodes, final nodes, and
production nodes. (See App. Br. 12.) The Examiner explains, however, that
the node 53 (which represents the document format PS) corresponds to the
recited beginning node, and the node 54 (which represents the document
format PDF) corresponds to the recited final node. (See Ans. 27; see also
Konda, Fig. 4.) The Examiner further explains that device (local printer)
nodes D1, D2 (which represent the document format “hard copy”)
correspond to the recited production nodes. (See Ans. 27; see also Konda
¶ 131, Fig. 1.) Appellant provides no reason as to why the Examiner’s
application of Konda is improper. Accordingly, we are unpersuaded of error
in the Examiner’s finding that Konda discloses the recited nodes.
In view of the foregoing, we sustain the Examiner’s § 103(a) rejection
of claims 1–9 and 24.

35 U.S.C. § 103(a) rejection over Konda and Hauser
1. Claims 10–133 and 15–21
Appellant argues that the Examiner has erred in rejecting independent
claim 10 because the applied prior art fails to disclose two features:

3 Regarding claim 11, Appellant contends that the Examiner fails to specify
the reference on which the Examiner relies and to explain how the applied
prior art teaches the recited limitations. Since claim 1 recites similar
limitations, we note that the Examiner’s discussion of claim 1 may inform
the discussion of claim 11.
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(i) simplifying a transformation graph to remove a production edge; and
(ii) removing a self-loop. (See App. Br. 13–14.) Independent claim 19
recites similar features.4 (See id. at 15, 21.) We disagree with Appellant.
Referring to Appellant’s arguments with respect to claim 1, Appellant
contends that neither Konda nor Hauser discloses the simplifying step. (See
App. Br. 13.) For the reasons discussed above with respect to claim 1, we
are unpersuaded of error in the Examiner’s finding that the applied prior art
discloses the simplifying step. (See Ans. 8–9, 11–12, 25, 27.)
Appellant also contends that Hauser does not teach removing the self-
loop because it is still present in figure 7b. (See App. Br. 13–14.) As the
Examiner points out, however, Hauser discloses two transformation rules:
one that creates a self-loop, which Hauser indicates is shown in figure 7a;
and one that “eliminate[s]” the self-loop, which Hauser indicates is shown in
figure 7b. (See Ans. 12–13; see also Hauser ¶ 49, Figs. 7a, 7b.) Hauser
teaches using these rules to optimize transformation. (See Hauser ¶ 14; see
also Ans. 13.) This teaching supports modifying Konda’s system such that
it applies Hauser’s transformation rules, which create and eliminate self-
loops to optimize transformation. (See Ans. 13.) Accordingly, we are
unpersuaded of error in the Examiner’s finding that the applied prior art
discloses removing a self-loop.
We note that the Examiner, in rejecting claim 19, provides an
alternative analysis with respect to the step of removing a self-loop. (See
Ans. 16–17; see also Ans. 27.) Appellant contends that the Examiner’s

4 In Appellant’s discussion of claim 19, Appellant states that the claim
depends from claim 10 and that Appellant’s analysis of claim 11 applies.
We note, however, that claim 19 is an independent claim and that
Appellant’s analysis of claim 10 applies.
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analysis is improper because removing all edges, as taught by Konda, is not
the same as removing the self-loop taught by Hauser. (See App. Br. 13–14.)
Given that a self-loop is an edge that links a node to itself, however, we
remain unpersuaded of error in the Examiner’s finding that the applied prior
art discloses the removing step. (See Hauser ¶ 34.)
2. Claim 14
Referring to Appellant’s arguments with respect to claim 4, Appellant
contends that neither Konda nor Hauser discloses substituting an optimal
sub-route into a simplified bifurcated transformation graph. (See App. Br.
15.) For the reasons discussed above with respect to claim 4, we are
unpersuaded of error in the Examiner’s finding that the applied prior art
discloses the argued feature. (See Ans. 9, 26.)
3. Claim 22
Appellant argues that the Examiner has erred in rejecting claim 22
because the applied prior art fails to disclose reflecting a bifurcated
transformation graph around a production node to represent that node by
directed edges without any self-loops. (See App. Br. 16–17.) In particular,
Appellant contends without explanation that Hauser’s transformation, as
shown in figure 2, does not teach the recited reflecting step. (See id. at 17.)
As the Examiner points out, figure 2 depicts a transformation rule applicable
to an edge connecting a node to itself (i.e., a self-loop). (See Ans. 17–18,
29–30; see also Hauser ¶ 36, Fig. 2.) Hauser teaches removing the self-loop
and introducing a repeat-loop, while keeping all other edges of the node
unchanged. (See Hauser ¶ 36, Fig. 2; see also Ans. 17–18, 29–30.) Without
more from Appellant, we are unpersuaded of error in the Examiner’s finding
that the applied prior art discloses the reflecting step.
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In view of the foregoing, we sustain the Examiner’s § 103(a) rejection
of claims 10–22.

35 U.S.C. § 103(a) rejection over Konda, Hauser, and Wang
Appellant argues that the Examiner has erred in rejecting claim 23
because the applied prior art fails to teach “bifurcating copies each node of a
transformation graph and transmutes production nodes from self-loops to
directed edges.” (See App. Br. 17–18.) Without explanation, Appellant
contends that modifying a node position using a “copy & paste” operation,
as taught by Wang, does not teach the recited copying and transmuting
limitations, even when combined with the teachings of Hauser. (See App.
Br. 17–18; see also Wang ¶ 87.) The Examiner relies on Wang for teaching
the copying limitation and Hauser for teaching the transmuting limitation.
(See Ans. 19; see also App. Br. 17.) As the Examiner finds with respect to
the copying limitation, Appellant provides no specific definition of how
copies of the nodes are made. (See Ans. 30.) As for the transmuting
limitation, the Examiner refers to figure 7 of Hauser, which shows the
transformation of a directed graph, where a self-loop is removed and
replaced with a repeat-loop, while other edges of the node remain
unchanged. (See Ans. 19; see also Hauser ¶ 49, Fig. 7.) We are
unpersuaded of error in the Examiner’s findings that the applied prior art
discloses the recited copying and transmuting limitations. Accordingly, we
sustain the Examiner’s § 103(a) rejection of claim 23.

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DECISION
The Examiner’s decision rejection claims 1–24 under 35 U.S.C.
§ 103(a) is affirmed.
The Examiner’s decision rejecting claims 10–21 under 35 U.S.C.
§ 101 is reversed.
The Examiner’s decision rejecting claims 19–21 under 35 U.S.C.
§ 112, second paragraph, is reversed.
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)(iv)(2011).

AFFIRMED-IN-PART

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