Ex Parte Petev et al

Board of Patent Appeals and Interferences

Nov 5, 2010

10856053 (B.P.A.I. Nov. 5, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PETIO PETEV and ELITSA PANCHEVA
____________________

Appeal 2009-006210
Application 10/856,053
Technology Center 2100
____________________

Before LANCE LEONARD BARRY, THU A. DANG, and JAMES R.
HUGHES, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-006210
Application 10/856,053

I. STATEMENT OF CASE
Appellants appeal the Examiner’s final rejection of claims 1-23 under
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

A. INVENTION
According to Appellants, the invention relates to naming systems in
which naming operations are performed locally with the results stored in
non-persistent memory (Spec. 1, ¶ [0001]).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary and reproduced below:

1. An apparatus comprising:

a server node;

a non-persistent storage unit accessible by the server
node; and

a hierarchical naming structure retained within the non-
persistent storage unit to be removed if the server is rebooted.

C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Chatterjee US 7,058,639 B1 Jun. 06, 2006
(filed on Aug. 30, 2002)
Lipkin US 6,850,893 B2 Feb. 01, 2005
(filed on Jan. 12, 2001)

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Claims 1-8 and 17-19 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Chatterjee.
Claims 9-12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chatterjee in view of Lipkin.
Claims 13-16 and 20-23 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lipkin in view of Chatterjee.

II. ISSUE
Has the Examiner erred in finding that Chatterjee teaches “a server
node,” “a non-persistent storage unit accessible by the server node” and “a
hierarchical naming structure retained within the non-persistent storage unit”
(claim 1), as Appellants contend.

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Chatterjee
1. Chatterjee discloses managing hierarchically structured information,
whereby a multi-level hash table is created by creating a plurality of
hash tables for a plurality of levels of a hierarchy associated with the
hierarchically structured information (col. 3, ll. 4-9), and the plurality
of hash tables and associated methods may be implemented in a cache
and in a cluster repository (col. 4, ll. 21-23).
2. Computer system 900 includes a main memory 906, such as a random
access memory (RAM) or other dynamic storage device, for storing
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information and instructions to be executed by processor 904 (col. 10,
ll. 20-38; Fig. 9).
3. The computer system 900 can send messages and receive data through
the Internet, wherein a server 930 transmits a requested code for an
application program through the Internet 928, ISP 926, local network
922 and communication interface 918 of the computer system 900
(col. 12, ll. 1-6; Fig. 9).

IV. ANALYSIS
35 U.S.C. § 102(e)
Independent Claim 1
As to independent claim 1, Appellants contend that Chatterjee “fails
to teach or suggest the missing element of ‘a server node’ and that ‘a
hierarchical naming structure retained within the non-persistent storage unit
to be removed if the server is rebooted” (App. Br. 11). In particular, though
Appellants admit that Chatterjee “teaches a server element that is available
across the network,” Appellants argue that Chatterjee “does not indicate that
server 930 has a non-persistent storage unit” (id.). Further, Appellants argue
that Chatterjee “does not disclose that any naming structure is removed
responsive to reboot of the server” (id.).
The Examiner responds that “[t]here is no claim language that
distinguishes a ‘server node’ from any other type of computing node” and
that “Appellant[s] fail[] to disclose and explain, both in the claims and in the
specification, what constitutes a ‘server node’, and how such an embodiment
would be vital to the invention” (Ans. 12). Nevertheless, the Examiner finds
that “Figure 9 [of Chatterjee] depicts an exemplary embodiment of the
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methods and systems taught in the disclosure, which shows at 930 a server
node” (id.). Further, the Examiner finds that “Chatterjee discloses, among
other things, the capability of storing hash tables in a cache” (id.).
Appellants’ contention that Chatterjee “does not indicate that server
930 has a non-persistent storage unit” (App. Br. 11) is not commensurate in
scope with the language of claim 1. That is, claim 1 does not require that a
server has a non-persistent storage unit. Similarly, though Appellants argue
that Chatterjee “does not disclose that any naming structure is removed
responsive to reboot of the server” (id.), claim 1 does not require that a
naming structure is removed but rather “to be removed” responsive to
reboot. Since the “to be removed” feature is not positively recited as being
performed, the naming structure of claim 1 is not actually “removed.” An
intended use will not limit the scope of the claim because it merely defines a
context in which the invention operates. Boehringer Ingelheim Vetmedica,
Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003).
Thus, an issue we address on appeal is whether Chatterjee teaches “a
server node,” “a non-persistent storage unit accessible by the server node”
and “a hierarchical naming structure retained within the non-persistent
storage unit,” as positively recited in claim 1.
Chatterjee discloses a dynamic storage device for storing information
and instructions to be executed by processor (FF 2), wherein a server has
access to the storage device (FF 3). In the storage device, hierarchically
structured information is managed, and a plurality of hash tables and
associated methods may be implemented in cache (FF 1).
We find Chatterjee’s dynamic storage device wherein the plurality of
hash tables may be implemented in cache to be a non-persistent storage unit.
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Since Chatterjee’s server has access to the storage device, we find Chatterjee
to also disclose a server node wherein the non-persistent storage unit is
accessible to the server node. In fact, even Appellants admit that Chatterjee
“teaches a server element that is available across the network” (App. Br. 11).
Furthermore, since hierarchically structured information is managed
in the storage device, we find Chatterjee to disclose a hierarchical naming
structure retained within the non-persistent storage unit. We therefore agree
with the Examiner and find that Chatterjee anticipates claim 1.
Independent Claim 17 and Dependent Claims 2, 6, 18, and 19
As to independent claim 17, Appellants argue that Chatterjee “fails to
teach or suggest nested hash tables” (App. Br. 12). However, the Examiner
finds that Chatterjee discloses such limitation because “Chatterjee teaches
the capability of ‘creating a plurality of hash tables for a plurality of levels
of a hierarchy’” (Ans. 13).
We agree with the Examiner. That is, Chatterjee discloses organizing
a plurality of hash tables (FF 1).
Furthermore, we find the term “nested” cannot distinguish the claimed
invention from Chatterjee. In particularly, the “means for hierarchically
organizing a plurality of contexts” recited in claim 17 organizes the contexts
as two level “nested” hash tables. However, the hash tables that are “nested”
are not structurally or functionally related to the underlying substrate (i.e.,
means for hierarchically organizing) in any novel way. Our reviewing court
has held that non-functional descriptive material cannot lend patentability to
an invention that would have otherwise been anticipated by the prior art.
See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). Cf. In re Gulack, 703
F.2d 1381, 1385 (Fed. Cir. 1983) (when descriptive material is not
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functionally related to the substrate, the descriptive material will not
distinguish the invention from the prior art in terms of patentability).
Although claim 17 recites “nested hash tables,” we interpret the
“nested hash table” in accordance with the language of the claim, and in
light of Appellants’ Specification, as data structures into which a plurality of
data structures are organized. Thus, we find such mere arrangement of data
structures to be nonfunctional descriptive material. See MPEP § 2106.01
(“‘Nonfunctional descriptive material’ includes but is not limited to music,
literary works, and a compilation or mere arrangement of data.”).
We note that claim 17 does not require an actual nested hash table, but
rather recites a means for hierarchically organizing a plurality of contexts,
wherein the plurality of contexts that are organized as “nested hash tables.”
Therefore, the adjective “nested” which is merely a label that modifies the
hash tables cannot distinguish the invention from the applied prior art.
Thus, we accord no patentable weight in our analysis to the recited
“nested” term.
Since Appellants’ arguments merely rely on the non-functional
descriptive material to distinguish the claimed invention from the prior art,
we are not persuaded of error in the Examiner’s initial showing of
anticipation. Accordingly, for the above reasons, we affirm the rejection of
claim 17 and claims 2, 6, 18, and 19 falling therewith under 35 U.S.C. §
102(e).
Claims 3-5, 7 and 8
As to claims 3-5, Appellants argue that Chatterjee “does not disclose a
context that contains a basic object that is linked to a container object as part
of the hierarchical naming structure” since “[t]he usage of name-value pairs
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[of Chatterjee] is for identifying information within a hierarchy, not as
elements of the hierarchy” (App. Br. 14). However, such argument is not
commensurate in scope with the language of the claims. In particular, claim
3 merely requires that the naming structure “comprises” the plurality of
contexts. Furthermore, we agree with the Examiner that the plurality of
contexts comprised in the naming structure of claim 3, which is merely an
arrangement of a data structure, reads on “the name-value pair association
stored within the hierarchy of Chatterjee” (Ans. 14)
As to claims 7 and 8, Appellants contend that “the Examiner has
failed to identify these three distinct and required elements in the reference”
(App. Br. 14). However, the Examiner finds that Chatterjee “discloses that
objects in the hierarchy contain values and pointers to other objects” wherein
“[t]he elements of the claimed basic objects are nothing more than some
value that has a name and links to another object” (Ans. 14-15). We agree
with the Examiner that the basic object comprising name string, byte array
and link identifier, which is merely a compilation of a data structure, read on
an object comprising values and name links of Chatterjee.
35 U.S.C. § 103(a)
Claims 9-12
As to independent claim 9, though Appellants admit that Chatterjee
“discloses creating a plurality of hash tables, associating each hash table
with a level of hierarchically organized data” (App. Br. 15), Appellants
argue that “the tables [of Chatterjee] are not hierarchical representation of
objects/data” (id.) since “[t]he hierarchical representation of objects/data
means that the representation itself is hierarchically organized” (App. Br.
16). However, such argument is not commensurate with the language of
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claim 9. That is, claim 9 does not recite any such “representation itself is
hierarchically organized.” Instead, claim 9 merely requires a “hierarchical
representation of objects.”
Chatterjee discloses creating a plurality of hash tables for a plurality
of levels of a hierarchy associated with the hierarchically structured
information (FF 1). In fact, as admitted by Appellants, Chatterjee discloses
“associating each hash table with a level of hierarchically organized data”
(App. Br. 15). We find such hash tables associating with the hierarchical
data/objects to be a “representation” of the data/objects.
Appellants then merely argue that Lipkin does not disclose the
limitations of claims 9-12 (App. Br. 16-17). However, the Examiner has
rejected the claims based on the combination of Chatterjee and Lipkin, and
nonobviousness cannot be shown by attacking the references individually.
See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Rather, the
test for obviousness is what would have been suggested to those of ordinary
skill in the art from the combined references and not what a particular
reference fails to teach. See In re Kahn, 441 F.3d 977, 987-88 (Fed. Cir.
2006).
Independent Claims 13 and 20, and Dependent Claims 14-16 and 21-23
Appellants present the same contentions for claims 13 and 20 as those
discussed above (App. Br. 18). However, as discussed above, we find no
error in the Examiner’s reliance on Chatterjee and Lipkin. Accordingly,
claims 13 and 20 also fall.
As to claims 14-15, Appellants again merely argue that Lipkin does
not disclose the limitations of the claims (App. Br. 18-19). Since the
Examiner has rejected the claims based on the combination of Lipkin and
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Chatterjee, Appellants cannot show nonobviousness by attacking Lipkin
individually.
Since Appellants do not provide separate arguments for claims 16 and
21-23 from those of claims 13-15, claims 16 and 21-23 also fall with claims
13-15.

V. CONCLUSIONS AND DECISION
Appellants have not shown that the Examiner erred in finding that
claims 1-8 and 17-18 are anticipated by the teachings of Chatterjee.
Appellants have not shown that the Examiner erred in concluding that
claims 9-12 are unpatentable over the combined teachings of Chatterjee in
view of Lipkin.
Appellants have not shown that the Examiner erred in concluding that
claims 13-16 and 20-23 are unpatentable over the combined teachings of
Lipkin in view of Chatterjee.
The Examiner’s decision rejecting claims 1-8 and 17-19 under
35 U.S.C. § 102(e) and rejecting 9-16 and 20-23 under 35 U.S.C. § 103(a) 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)(iv).

AFFIRMED

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peb

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